Appeal No. 1997-1817
Application No. 08/139,693
therapeutic administration route, e.g., extracorporeal processing, to treat HIV-infected
cells with AZT/TNF as suggested by Forsdyke and Matsuyama (answer, p. 15).
In our opinion, with or without appellants' alleged admission,4 the examiner has
not provided the requisite motivation or suggestion to combine the AZT/TNF HIV-
treatment of Forsdyke and Matsuyama with known extracorporeal blood processing
methods for treating retroviral infections as claimed. Neither Forsdyke nor the in vitro
procedure of Matsuyama discloses or suggests "reinfusing the process body fluid" as
required by claim 1 and its dependent claims. The examiner has not explained why one
of ordinary skill in the art would have reasonably considered a process performed in a
test tube, i.e., Matsuyama's in vitro experiment for infected cells in bovine serum, as
equivalent to or a substitute for extracorporeal processing of a body fluid as recited in
claim 1.
Based on this record, we find that the examiner has relied on impermissible
hindsight in making his determination of obviousness. In re Fritch, 972 F.2d 1260,
1266, 23 USPQ2d 1780, 1784 (Fed. Cir. 1992) (“It is impermissible to engage in
hindsight reconstruction of the claimed invention, using the applicant’s structure as a
template and selecting elements from references to fill the gaps”).
4According to appellants, "[r]ather than an admission, the Appellants have simply stated that the
extracorporeal processing that will be employed in the invention, can be accomplished by their proposed
new method and by other such extracorporeal processing methods that presently exist. ... The mere
existence of a technique does not make its use obvious." (brief, para. bridging pp. 12-13); and,
"Appellants [sic] alleged 'admission' is simply an acknowledgment [sic] that some methods of
extracorporeal blood processing exist." (brief, para. bridging pp. 15-16).
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