Ex parte HEIMBURGER et al. - Page 11

              Appeal No. 1997-3501                                                                                         
              Application No. 08/253,232                                                                                   

              suggested or directed one of ordinary skill in the art to the presently claimed process or                   
              would have provided one of ordinary skill in the art with a reasonable expectation of                        
              success of doing so for vWF.                                                                                 

                     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).   What is lacking                          
              here is a suggestion, motivation or reason to be found, explicitly or implicitly, in the prior art           
              for using the individual steps together in the claimed purification process to obtain purified               
              vWF.   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).                                      
                     For example, the disclosures of Austen, Mathews, Wang and Mitra provide detailed                      
              procedures primarily for the purification of Factor VIII:C.   They do not direct one of ordinary             
              skill in the art to a process of purifying and isolating vWF.                                                
                     The constituent factual findings for a prima facie case of obviousness are: (1) the                   
              scope and content of the prior art; (2) the level of ordinary skill in the art; (3) the differences          
              between the prior art and the claimed invention.  See Graham v. John Deere Co., 383 U.S.                     
              1, 17, 148 USPQ 459, 467 (1966).                                                                             


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