Appeal No. 2001-1048
Application No. 08/121,105
THE REJECTION UNDER 35 U.S.C. § 103:
Prima facie obviousness based on a combination of references requires that
the prior art provide “a reason, suggestion, or motivation to lead an inventor to
combine those references.” Pro-Mold and Tool Co. v. Great Lakes Plastics Inc., 75
F.3d 1568, 1573, 37 USPQ2d 1626, 1629 (Fed. Cir. 1996).
[E]vidence of a suggestion, teaching, or motivation to combine may
flow from the prior art references themselves, the knowledge of one of
ordinary skill in the art, or, in some cases, from the nature of the
problem to be solved. . . . The range of sources available, however,
does not diminish the requirement for actual evidence. That is, the
showing must be clear and particular.
In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999)
(citations omitted). The suggestion to combine prior art references must come from
the cited references, not from the application’s disclosure. See In re Dow Chemical
Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed. Cir. 1988).
According to the examiner (Answer, page 4) Murphy “teaches of [sic] the
amino acid sequence for a functional human interleukin 8 receptor, which has
77% amino acid identity with a second human neutrophil receptor isotype that also
binds IL-8.” In addition, the examiner notes (id.) that Murphy “sets forth of [sic] a
method of screening ligands of the IL-8 receptor by measuring binding affinity….”
However, as the examiner recognizes (id.) “Murphy does not teach of [sic]
antibodies which compete with IL-8 for binding to the IL8 receptor 2.”
The examiner relies on Lee to teach antibodies raised against PF4A (IL8
receptor 1), and Geysen to teach methods of identifying the antigenically active
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