Appeal No. 2000-0839
Application No. 08/355,502
either interleukins generally or IL-10 specifically.” As set forth in Ecolochem Inc. v.
Southern California Edison, 227, F.3d 1361, 1375, 56 USPQ2d 1065, 1075 (CAFC
2000) the:
“[S]uggestion to combine may be found in explicit or implicit
teachings within the references themselves, from the ordinary
knowledge of those skilled in the art, or from the nature of the problem
to be solved.” … However, there still must be evidence that “a skilled
artisan, confronted with the same problems as the inventor and with
no knowledge of the claimed invention, would select the elements
from the cited prior art references for combination in the manner
claimed.” … “[A] rejection cannot be predicated on the mere
identification … of individual components of claimed limitations.
Rather particular findings must be made as to the reason the skilled
artisan, with no knowledge of the claimed invention, would have
selected these components for combination in the manner
claimed.”…. [Citations omitted].
On reflection, it is our opinion that the examiner failed to provide the
evidence necessary to support a prima facie case of obviousness. Where the
examiner fails to establish a prima facie case, the rejection is improper and will be
overturned. In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir.
1988). Accordingly, we reverse the rejection of claims 1, 2, 4 and 8-10 under 35
U.S.C. § 103 as being unpatentable over Capon in view of Mosmann.
Claim 3:
According to the examiner (Answer, page 6) the combination of Capon in
view of Mosmann, discussed supra, does “not explicitly teach a chimeric protein
comprising the Fc region of IgG which includes a mutation which is a substitution of
[at] least one of the amino acids recited in claim 3.” The examiner relies on Winter
to teach the modification of conserved residues to abolish the abolish C1q binding
8
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