Appeal No. 1997-3019
Application No. 08/404,122
immunostimulating . . . thus using galactose oxidase in the formulation containing
neuraminidase as taught in Knop would have been obvious.”
Needless to say, the examiner’s response does not come to grips with appellant’s
contention that NAGO, which produces an apparently non-specific response in vitro,
produces the opposite response in vivo, i.e., an antigen-specific immune response, and
that “[i]t is this specificity that was unexpected and that is key to the usefulness of NAGO as
an adjuvant.” Brief, page 12. Given the apparent lack of a specific immune response to
NAGO in vitro, the examiner has not explained why one skilled in the art would combine
NAGO with an antigenic component to form a vaccine composition, much less why one
would combine neuraminidase and galactose oxidase in the specific amounts or ratios
required by the claims.
To establish a prima facie case of obviousness, there must be some reason,
suggestion, or motivation found in the prior art whereby a person of ordinary skill in the field
of the invention would make the modifications required. That knowledge cannot come
from appellant’s disclosure of the invention itself. Diversitech Corp. v. Century Steps, Inc.,
850 F.2d 675, 678-79, 7 USPQ2d 1315, 1318 (fed. Cir. 1988); In re Geiger, 815 F.2d
686, 688, 2 USPQ2d 1276, 1278 (Fed. Cir. 1987); Interconnect Planning Corp. v. Feil,
774 F.2d 1132, 1143, 227 USPQ 543, 551 (Fed. Cir. 1985). On the record before us, we
find no reasonable suggestion for combining or modifying the teachings of the references
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