Appeal No. 1997-4277
Application No. 08/290,038
finds (Answer, bridging paragraph, pages 3-4) that “the modification of the mouse
of Kyoizumi by also transplanting fetal spleen was within the ordinary skill in the art
at the time the claimed invention was made.”
Appellants argue (Brief, page 6) that in contrast to the position taken by the
examiner “Kyoizumi et al. discloses the results of experiments wherein an
immunocompromised scid/scid mouse was implanted with a fragment of human
fetal bone … [t]he bone fragments are not implanted in juxtaposition with other
tissues, nor is the formation of a hybrid organ structure comprising bone taught or
suggested.”
As set forth in Ecolochem Inc. v. Southern California Edison, 227 F.3d 1361,
1375, 56 USPQ2d 1065, 1075 (Fir. Cir. 2000) the:
“[S]uggestion to combine may be found in explicit or implicit
teachings within the references themselves, from the ordinary
knowledge of those skilled in the art, or from the nature of the problem
to be solved.” … However, there still must be evidence that “a skilled
artisan, confronted with the same problems as the inventor and with
no knowledge of the claimed invention, would select the elements
from the cited prior art references for combination in the manner
claimed.” “[A] rejection cannot be predicated on the mere
identification … of individual components of claimed limitations.
Rather particular findings must be made as to the reason the skilled
artisan, with no knowledge of the claimed invention, would have
selected these components for combination in the manner claimed.
[Citations omitted].
Here, the examiner argues (Answer, pages 3-4) that since “[t]he human
hematolymphoid organs were know in the art to be spleen, bone, thymus, liver
lymphnodes [sic], skin and omentum … the modification of the mouse of Kyoizumi
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