Appeal No. 2000-0839
Application No. 08/355,502
appellants’ argument is no longer relied on by the examiner. As set forth In re
Rinehart, 531 F.2d 1048, 1052, 189 UPSQ 143, 147 (CCPA 1976):
When prima facie obviousness is established and evidence is
submitted in rebuttal, the decision-maker must start over. … An
earlier decision should not, as it was here, be considered as set in
concrete, and applicant's rebuttal evidence then be evaluated only on
its knockdown ability. Analytical fixation on an earlier decision can
tend to provide that decision with an undeservedly broadened
umbrella effect. Prima facie obviousness is a legal conclusion, not a
fact. Facts established by rebuttal evidence must be evaluated along
with the facts on which the earlier conclusion was reached, not against
the conclusion itself. … [A] final finding of obviousness may of course
be reached, but such finding will rest upon evaluation of all facts in
evidence, uninfluenced by any earlier conclusion reached by an earlier
board upon a different record.
To the extent that the examiner relies on some additional teaching in the
‘964 patent to overcome the teaching away in Capon II, the examiner fails to
elucidate this additional teaching on this record. We remind the examiner that in
order to establish a prima facie case of obviousness, there must be both, a
suggestion or motivation to modify the references or combine reference teachings,
and a reasonable expectation of success. In re Vaeck, 947 F.2d 488, 493, 20
USPQ2d 1438, 1442 (Fed. Cir. 1991). While it may be “obvious to try” the general
approach set forth in the ‘964 patent, to produce an IL-10/Fc fusion; obvious to try is
not the standard of obviousness. In re O’Farrell, 853 F.2d 894, 903-04, 7 USPQ2d
1673, 1681 (Fed. Cir. 1988). In our opinion, based on the evidence of record in this
application, a person of ordinary skill in the art would not have had a reasonable
expectation of success in obtaining a IL-10/Fc fusion wherein both ends retain their
biological activity.
5
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007