Ex parte HERSHENSON - Page 5

                 Appeal No. 1997-2133                                                                                                                
                 Application 08/172,507                                                                                                              

                 lines 15-19.  Morimoto describes that the protein urokinase can be stabilized using polar                                           
                 amino acids such as glutamic acid and histidine.  Morimoto, page 4, last paragraph.                                                 
                          The examiner surmises that it would have been obvious to one of ordinary skill in the                                      
                 art at the time of the present invention to use the stabilizing amino acids glutamic acid and                                       
                 histidine of Lee, Audhya and Morimoto either alone or in combination to stabilize Zsebo’s                                           
                 stem cell factor preparation prior to lyophilization because these amino acids are commonly                                         
                 used for such purposes.   Examiner’s Answer, page 5.   It is also argued that it would have                                         
                 been obvious to determine all operable and optimal parameters of the formulation suggested                                          
                 by Zsebo, Lee, Audhya and Morimoto, such as pH and the concentration of the additives,                                              
                 because it is desirable to have the product formed in such a fashion that it is non-toxic, safe                                     
                 and easy to handle and administer; optimal formulations have such desirable characteristics.                                        
                 Examiner’s Answer, page 6.                                                                                                          
                          Appellant argues that no prima facie case of obviousness is made because no                                                
                 motivation to combine the teachings of the references is present, and there is no reasonable                                        
                 expectation of success.   However, the test for obviousness is what the combined teachings                                          
                 of the references would have suggested to one of ordinary skill in the art.  See In re Young,                                       
                 927 F.2d 588, 591, 18 USPQ2d 1089, 1091 (Fed. Cir. 1991) and                                                                        
                 In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981).  In evaluating such                                                 
                 references it is proper to take into account not only the specific teachings of the references                                      


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