Appeal No. 1997-3329
Application No. 08/396,988
degrading enzymes involved in normal embryonic development, growth, tissue remodeling,
and tissue repair and the claimed proteinase is described as useful in a manner similar to
other known matrix metalloproteinases that have elastolytic activity.
DISCUSSION:
The rejection under 35 U.S.C. § 103
Obviousness is a legal conclusion based on the underlying facts. Graham v. John
Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966); Continental Can Co. USA, Inc.
v. Monsanto Co., 948 F.2d 1264, 1270, 20 USPQ2d 1746, 1750 (Fed. Cir. 1991); Panduit
Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1566-68, 1 USPQ2d 1593, 1595-97 (Fed.
Cir. 1987). Here, the dispositive question is whether those of ordinary skill in this art at the
time of the invention would have found the claimed human macrophage metalloelastase
obvious from the disclosure of a murine macrophage metalloelastase and the disclosure of
Shapiro that a homologous metalloelastase, not specifically described, could exist and
would be desirable to isolate. We agree with the examiner that one skilled in the art could
reasonably read the statement in Shapiro that:
. . . we demonstrated that Mme is located on mouse chromosome 9, suggesting
that the human homolog of Mme may map to human chromosome 19 . . . .
as indicating the existence of the human macrophage metalloelastase. However, this
interpretation is in contrast with the statement at page 3 of the specification that:
despite the efforts of many investigators, human macrophage elastase
activity could not be documented and many doubted its existence.
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