Appeal No. 1997-4277
Application No. 08/290,038
by also transplanting fetal spleen was within the ordinary skill in the art at the time
the claimed invention was made.” We do not find the evidence and reasoning
presented by the examiner sufficient to support a prima facie case of obviousness
under 35 U.S.C. § 103.
The examiner relies on Kyoizumi’s concluding remark to provide the
necessary suggestion to modify Kyoizumi in a manner to arrive at the claimed
invention. However, we do not find Kyoizumi’s speculation (page 1711, first column)
that “full reconstitution … in SCID-hu mice might be achieved by coimplantation …
with other human hematolymphoid organs” [emphasis added] sufficient to provide
the requisite suggestion to produce a mouse host as claimed comprising a hybrid
tissue formed by bone fragments and spleen grown in juxtaposition. Instead,
Kyoizumi’s concluding statement is more a suggestion that one try to obtain full
reconstitution of human hematopoietic and immune systems by coimplantation of
human BM with other human hematolymphoid organs. “Obvious to try,” however, is
not the standard of obviousness under 35 U.S.C. § 103. See In re O’Farrell, 853
F.2d 894, 903, 7 USPQ2d 1673, 1680 (Fed. Cir. 1988).
In addition, as appellants explain (Brief, page 9) “[t]he standard for
obviousness is ‘whether the prior art would also have revealed that in so making or
carrying out, those of ordinary skill would have a reasonable expectation of
success’, In re Vaeck, [947 F.2d 488, 493,] 20 USPQ2d 1438[, 1442 (Fed. Cir.
1991)].” We note that claim 1 requires “a hybrid tissue providing long-term
production, for greater then [sic] twenty weeks, of human myeloid cells, B-cells and
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