Appeal No. 2000-0839
Application No. 08/355,502
[those molecules that are mentioned in the patent] fail to bear any structural or
functional relationship to IL-10.”
In response, the examiner argues (Answer, page 8) that the ‘964 patent
demonstrates “that is was well known in the art at the time of the invention that
production of a chimeric protein containing the Fc domain of IgG fused to any
soluble protein would increase the circulating half-life of the protein.” The examiner
however, fails to identify any teaching in the art to support this position. We caution
the examiner against the use of expansive generalizations. Instead, we remind the
examiner that conclusions of obviousness must be based upon facts, not generality.
In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967), cert.
denied, 389 U.S. 1057 (1968); In re Freed, 425 F.2d 785, 788, 165 USPQ 570,
571 (CCPA 1970). Here, the examiner offers no evidence to support her
suggestion that the fusion of an IgG Fc domain to any soluble protein would
necessarily increase its circulating half-life.
To the extent that the examiner would argue (Answer, page 9) that while the
‘964 patent does not teach IL-10, it does teach growth factors (column 7, lines 11-
24), therefore since cytokines are growth factors, and IL-10 is a cytokine, the ‘964
patent includes IL-10, we can not agree. Instead, on this record, we agree with
appellants (Brief, pages 10-11) there “is no suggestion that one should select a
protein from … [the] vast number of possibilities [disclosed in the ‘964 patent] that
has any particular structural or functional characteristics, let alone one having the
characteristics of IL-10. Indeed, there is no mention of
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