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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