Appeal No. 1997-0798
Application 08/128,020
recognize one protein but not the other to some degree. The examiner has not relied
upon any evidence which establishes that one of ordinary skill in the art would be able
to obtain an antibody having the properties required by the claims on appeal with a
reasonable expectation of success.
In any eve nt, notably missing from the examiner’s statement of the rejection on
pages 3-4 of the Examiner’s Answer is any acknowledgement and discussion of the
specific cross-reactivity requirements of the claims on appeal. Obviousness must be
based upon the claimed subject matter as a whole. 35 U.S.C. § 103(a). This has not
occurred here.
Our review of the record leads us to conclude that the examiner’s combination of
the references is based upon an impermissible consideration of appellants’ invention
and not upon the teachings of the references themselves. We do not find any guidance
in the references to use troponin T as a marker in the manner required by the claimed
invention. Nor do we find guidance in the references to develop an antibody as required
by the claims on appeal. The Kabat reference relied upon by the examiner in rejecting
claims 4, 6, and 11 does not rectify the deficiencies we have found in the other
references.
Having determined that the references relied upon by the examiner do not
establish a prima facie case of obviousness, we need not review appellants’ evidence of
non-obviousness.
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