Appeal No. 1997-4277
Application No. 08/290,038
defines. In re Wilder, 429 F.29 447, 450, 166 USPQ 545, 548 (CCPA 1970). In
this case, claim 18 is directed to:
A method … comprising implanting viable normal human fetal spleen,
normal human fetal bone fragments and normal human fetal thymus
tissue in juxtaposition … in an immunocompromised mouse
…irradiating said hybrid tissue4, injected5 [sic] HLA mismatched
human hematopoietic progenitor cells into the cavity of said human
bone; … determining the repertoire of lineages of hematopoietic cells
that develop having the HLA type of said progenitor cells.
The examiner’s focus is on the first and last step of this method. It is, however,
unclear from the references relied upon, and the record before us, where the
examiner finds a suggestion to irradiate the tissue after it is implanted, and then
inject HLA mismatched progenitor cells into the cavity of the implanted human bone
as required by the claim.
We remind the examiner that obviousness can only be established by
combining or modifying the teachings of the prior art to produce the claimed
invention where there is some teaching, suggestion, or motivation to do so found
either in the references themselves or in the knowledge generally available to one of
ordinary skill in the art. See In re Fine, 837 F.2d 1071, 1075, 5 USPQ2d 1596,
1598 (Fed. Cir. 1988). On this record, the examiner failed to address all the
limitations of the claimed invention. As a result the examiner failed to identify the
requisite teaching necessary to support the modification of the prior art to produce
the claimed invention.
4 We note that the phrase “said hybrid tissue” lacks antecedent support in this claim.
5 It appears that appellants’ intend “injecting” instead of “injected.”
13
Page: Previous 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 Next
Last modified: November 3, 2007