Appeal No. 1997-3330
Application No. 08/271,870
preparation of the corresponding antibodies and tracers conventionally used in
immunoassays.
It is the examiner’s position that (Examiner’s Answer, page 5):
[i]n view of the fact that mycophenolic acid is a well known drug (Nelson et
al.), it would be obvious to use it as a hapten to prepare immunogens or
tracers by the conventional techniques of Brinkley and Erlanger, as claimed,
and to further use these immunogens for the preparation of antibodies useful
in the conventional assay formats of Rose et al.
It is, further, argued that “the production by conventional means of an antibody or tracer
from any well known hapten would be obvious to one of ordinary skill in the art.” (Id.) In the
statements in support of the rejection for obviousness, the examiner has focused on the
method claims.
In rejecting the claims under 35 U.S.C. § 103, the examiner bears the initial burden
of presenting a prima facie case of obviousness. See In re Rijckaert, 9 F.3d 1531, 1532,
28 USPQ2d 1955, 1956 (Fed. Cir. 1993). The conclusion that the claimed subject matter
is prima facie obvious must be supported by evidence, as shown by some objective
teaching in the prior art or by knowledge generally available to one of ordinary skill in the
art that would have led that individual to combine the relevant teachings of the references
to arrive at the claimed invention. See In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596,
1598 (Fed. Cir. 1988). An obviousness analysis requires that the prior art both suggest
the claimed subject matter and reveal a reasonable expectation of success to one
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