Appeal No. 1997-2795
Application No. 08/438,933
To establish a prima facie case of obviousness, there must be both some suggestion or
motivation to modify the reference or combine reference teachings and a reasonable expectation of
success. Furthermore, the prior art must teach or suggest all the claim limitations. In re Vaeck, 947
F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991).
According to the examiner,
the prior art processes are considered so close to those instantly claimed that a slight
modification of pH or temperature, within the prior art guidelines, to obtain optimal
results, is considered prima facie obvious to the worker of ordinary skill in the art at
the time the invention was made. [Answer, pages 8-9.]
However, the prior art methods differ from the claimed method in more than just pH and temperature.
Only Casu (a) discloses the claimed periodate oxidation step, neither Casu nor Fransson (M) disclose
(b) partial alkali depolymerization followed by (c) sodium borohydride reduction in combination, and
(d) although both Fransson (M) and Casu disclose fractionated recovery of heparin degradation
products, neither discloses or suggests (e) specific recovery of products having a molecular weight not
less than that of the starting heparin material. Not only is the examiner’s statement of the differences
between the prior art and the claimed invention lacking, but also it is unclear how the examiner
proposes to modify and/or combine the disclosures of Fransson (M) and/or Casu to arrive at the
claimed invention. Whether or not the examiner considers a particular claim limitation “critical” or not,
all of the claimed limitations should be addressed to establish a prima facie case of obviousness.
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