Appeal No. 1999-1389
Application No. 08/618,485
Accordingly, we affirm the rejection of claims 1 and 2 under 35 U.S.C.
§ 103 as being unpatentable over Yamamoto in view of Luckow and Cooke.
Claims 3 and 4:
Appellant argues (Brief, page 9) that “[a]lone or in combination, none of the
applied references disclose that domain III is responsible for the macrophage
activating function of the protein, or that domain III could be independently cloned
while preserving its structural and functional integrity.”
In response, the examiner emphasizes, inter alia, that Cooke teach domain III
of the vitamin D3 binding protein. However, to establish a prima facie case of
obviousness, there must be both some suggestion or motivation to modify the
references or combine reference teachings and a reasonable expectation of
success. In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir.
1991). On this record, the examiner fails to identify a suggestion in the prior art to
specifically clone domain III of the vitamin D3-binding protein. The examiner also
fails to identify a suggestion to combine domain III of vitamin D3 binding protein with
immobilized ß-galactosidase and sialidase to obtain macrophage activating factor.
Furthermore, the examiner fails to explain how the applied combination of
references would provide one with a reasonable expectation of success that the
combination of domain III of vitamin D3 with ß-galactosidase and sialidase would
result in obtaining macrophage activating factor.
Accordingly, we reverse the rejection of claim 3 and 4 under 35 U.S.C.
§ 103 as being unpatentable over Yamamoto in view of Luckow and Cooke.
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