Appeal No. 1997-2133
Application 08/172,507
but also the inferences which one skilled in the art would reasonably be expected to draw
therefrom. In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968). The cited
references all generally deal with the stabilization of lyophilized proteins.
We assume, arguendo, that a prima facie case of obviousness has been presented
by the examiner, and thus the burden shifts to appellant to rebut that prima facie case. Such
rebuttal or argument can consist of any other argument or presentation of evidence that is
pertinent. In re Dillon, 919 F.2d 688, 692-93, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990) (en
banc), cert. denied, 500 U.S. 904 (1991). Accordingly, we carefully evaluate the objective
evidence of nonobviousness presented by the appellant.
Objective evidence of non-obvious presented by appellant includes teachings away in
the prior art references from the claimed invention. These teachings away are urged to rebut
any prima facie case of obviousness presented by the examiner.
Appellant’s point is well taken that a prior art reference must be considered in its
entirety, i.e. as a whole including portions which would lead away from the claimed invention.
W.L. Gore & Associates, Inc., v. Garlock, Inc., 721 F.2d 1540, 1550, 220 USPQ
303 (Fed. Cir. 1983). Appellant submits, for example, that taking a careful look at Lee
indicates that formulations containing histidine showed no biological activity and thus teach
away from the claimed invention. Lee, Table IV, page 5. Brief, pages 16-17. It is also
presented that Audhya teaches away from the use of sugars such as sucrose and mannitol,
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