Appeal No. 1997-3330
Application No. 08/271,870
as claimed, comes from appellants’ disclosure and not from the cited references. While
Nelson would, at best, describe the use of high performance liquid chromatography for
determining bioavailability of mycophenolic acid from plasma samples, it does not appear
to suggest or enable the preparation and use of monoclonal antibodies for such
bioavailability assays, particularly monoclonal antibodies which are capable of
distinguishing between mycophenolic acid and mycophenolic esters.
A general incentive does not make obvious a particular result, nor does the
existence of isolated techniques by which that particular result can be obtained. See In re
Deuel, 51 F.3d 1552, 1559, 34 USPQ2d 1210, 1216 (Fed. Cir. 1995). In the present
case, the examiner’s indication of the existence of and desirability of bioavailability assays
and the existence of techniques for the preparation of monoclonal antibodies and assay
formats, does not suggest the monoclonal antibodies, which are capable of distinguishing
between mycophenolic acid and mycophenolic esters, used in the method claimed. What
is lacking here is a suggestion, motivation or reason to be found explicitly or implicitly in
the prior art for preparing and using the specific monoclonal antibodies having the
indicated properties in the claimed method. In re O'Farrell, 853 F.2d 894, 903-04, 7
USPQ2d 1673, 1681 (Fed. Cir. 1988); In re Rouffet, 149 F.3d 1350, 1357, 47 USPQ2d
1453, 1458 (Fed. Cir. 1998).
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