Appeal No. 1997-4277
Application No. 08/290,038
lymphoid progenitor cells.” As explained by the examiner (Answer page 3),
Kyoizumi teaches the transfer of “fetal tissues such as thymus, liver and bone
fragments into murine recipients.” However, we find no suggestion, or teaching in
Kyoizumi that would provide a reasonable expectation of success that when a
mouse comprising “normal human fetal bone fragments and normal human fetal
spleen grown in juxtaposition,” “a hybrid tissue providing long-term production, for
greater then [sic] twenty weeks, of human myeloid cells, B-cells and lymphoid
progenitor cells,” will be obtained as required by claim 1.
Appellants’ specification (page 4) discloses “[t]he spleen tissue appears to
amplify to partially or wholly surround the growing human fetal bone and thymus to
form a hybrid tissue.” The examiner argues (Answer, page 8) that “[t]his growth of
spleen tissue to partially or wholly surround the bone and thymus is not recognized
by the specification as being unexpected or novel.” However, the examiner
provides no evidence that the prior art would have expected such a hybrid tissue to
form. We remind the examiner that "[t]o imbue one of ordinary skill in the art with
knowledge of the invention in suit, when no prior art reference or references of
record convey or suggest that knowledge, is to fall victim to the insidious effect of a
hindsight syndrome wherein that which only the inventor taught is used against its
teacher.” W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1553, 220
USPQ 303, 312-13 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
On this record, the examiner failed to provide the evidence necessary to
support a prima facie case of obviousness within the meaning of 35 U.S.C. §103.
7
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007