Appeal No. 1999-1313
Application 08/448,097
composition or device, or carry out the claimed process; and (2) whether the prior art
would also have revealed that in so making or carrying out, those of ordinary skill would
have a reasonable expectation of success. Both the suggestion and the reasonable
expectation of success must be founded in the prior art, not in the applicant’s disclosure.
In re Vaeck, 947 F.2d. 488, 495, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991). The examiner
must show that some objective teaching or suggestion in the applied prior art, or
knowledge generally available in the art, would have led one of ordinary skill in the art to
the claimed invention. Pro-Mold & Toll Co. v. Great Lakes Plastics, Inc., 75 F. 3d 1568,
1573, 37 USPQ2d 1626, 1630 (Fed. Cir. 1996).
In reaching our decision in this appeal, we have given careful consideration to
appellants’ specification and claims and to the respective positions articulated by
appellants and the examiner. We make reference to the Examiner’s Answer mailed June
24, 1998 (Paper No. 16 ) for the examiner’s reasoning in support of the rejection, and to
the Appeal Brief, received March 2, 1998 (Paper No. 15), and Reply Brief, received
October 29, 1998 (Paper No. 18) for appellants’ arguments against the rejection. We have
also carefully considered the references cited by the examiner.
In rejecting the appealed claims, the examiner characterizes Granoff as teaching
the purification of a 28 KD protein from H. influenzae, termed P4, which is the same as
appellant’s protein “e”. The examiner cites Deich as teaching the cloning and
4
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