Appeal No. 1999-1396
Application No. 08/524,668
this methodology is especially important in cases where the very ease with
which the invention can be understood may prompt one “to fall victim to the
insidious effect of a hindsight syndrome wherein that which only the invention
taught is used against its teacher.” []
Most if not all inventions arise from a combination of old elements. [] Thus,
every element of a claimed invention may often be found in the prior art. []
However, identification in the prior art of each individual part claimed is
insufficient to defeat patentability of the whole claimed invention. [] Rather, to
establish obviousness based on a combination of the elements disclosed in
the prior art, there must be some motivation, suggestion or teaching of the
desirability of making the specific combination that was made by the
applicant. [citations omitted]
In other words, “there still must be evidence that ‘a skilled artisan, . . . with no
knowledge of the claimed invention, would select the elements from the cited prior art
references for combination in the manner claimed.’” Ecolochem Inc. v. Southern California
Edison, 227 F.3d 1361, 1375, 56 USPQ2d 1065, 1075-76 (Fed. Cir. 2000).
At best, the statement of the rejection establishes that individual parts of the
claimed invention were known in the prior art, i.e., E. acervulina was known to be
immunogenic, and a protocol for making chicken monoclonal antibodies was known. It
may well be, as asserted by the examiner, that a person skilled in the art would have
expected a chicken monoclonal antibody raised against the polypeptides on Murray’s
Western blot to be “specific to a[n] immunodominant antigen.” Nevertheless, the examiner
has not pointed to any evidence of a suggestion to make a chicken antibody specific for
Eimeria acervulina in the first place, let alone one specific for an antigen “located on the
conoid of the anterior tip of Eimeria acervulina sporozoites,” as required by the claims.
5
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007