Appeal No. 1997-2393
Application No. 08/183,381
using goat anti-idiotype antibodies. This reference, therefore, suggests nothing
about baboon anti-idiotype antibodies.” With respect to Klein, Estabrook and
Huberman, appellant’s argue (Brief, page 18) that these “publications teach away
from appellants’ baboon anti-idiotype antibody vaccines” and Haagensen “suggests
nothing about baboon anti-idiotype antibodies…,” as discussed supra.
We agree with appellants. As set forth above, the mere fact that the prior art
could be modified would not have made the modification obvious unless the prior
art suggested the desirability of the modification. In re Gordon, 733 F.2d 900, 902,
211 USPQ 1125, 1127 (Fed. Cir. 1984). Here we see no such reason to modify
Thornton or Rubinstein with the secondary references applied by the examiner. As
explained by appellants Klein, Estabrook and Huberman references teach that the
immunogenic response against foreign antibodies can be minimized by treating
human subjects with primate antibodies and therefore teach away from the claimed
invention, which requires the primate antibody to stimulate an immune response.
Haagensen suggests that immunization of primates may result in antisera with
enhanced or CEA-specific antigenic determinants, however, the reference is silent
with respect to anti-idiotype antibodies, and the Herlyn reference uses goat, not
baboon, anti-idiotypic antibodies.
Therefore in our opinion the examiner failed to meet her burden of
establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443,
1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). Accordingly, we reverse the
examiner’s rejection of claims 9-13 and 19-21 under 35 U.S.C. § 103 over Thornton
10
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007