Appeal No. 1997-3501
Application No. 08/253,232
expectation of success must be founded in prior art, not in applicants’ disclosure. In re
Vaeck, 947 F.3d 488, 495, 20 USPQ2d 1438, 1444 (Fed. Cir. 1991).
As stated in Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1573,
37 USPQ2d 1626, 1629, (Fed. Cir. 1996) (citation omitted):
It is well-established that before a conclusion of obviousness may be made
based on a combination of references, there must have been a reason,
suggestion, or motivation to lead an inventor to combine those references.
In the present case, the appellants argue that the examiner is merely picking and
choosing from the cited references only those features that he finds can allegedly be used
to render appellants’ invention obvious under 35 U.S.C. § 103, and that this has been done
without proper motivation. Brief, page 20.
In rebuttal, the examiner suggests that the reason, suggestion or motivation to
modify or alter the procedure set forth in Austen for purifying Factor VIII, comes from the
secondary references, in their general disclosure of the desirability to add steps to obtain
higher purity, add stabilizers to retain activity and optimize conditions to streamline
protocols. Paper No. 36, page 4.
While we would agree with the examiner that the prior art indicates a general desire
to obtain compounds of higher purity and stability using streamlined protocols, the
examiner has not established that the references, presently relied upon, would have
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