Ex parte HEIMBURGER et al. - Page 10




              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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