Appeal No. 2000-1559 Page 9
Application No. 07/911,593
might be important in stimulating cell-mediated immune responses that
induce reported heterotypic immunity in a fashion similar to that of the
proteins of influenza virus. Baculovirus-expressed VP6 may also be a
useful component of future subunit vaccines containing additional
expressed outer capsid (VP3 and VP7) proteins. [Estes, paragraph
bridging pages 1493-1494, literature citations omitted, emphasis added.]
We reverse the rejection of all the appealed claims under 35 U.S.C. § 103(a), to
the extent predicated on Zygraich and Ijaz, further taken in view of Estes. When all the
prior art is considered together, including Estes, a person having ordinary skill would not
have a sufficient basis for the necessary predictability of success to here sustain a
rejection under 35 U.S.C. § 103(a).
With respect to the rejection of all the appealed claims over Zygraich and Ijaz,
further taken in view of Smith, our review of this rejection has been hampered by lack of
an adequate claim-by-claim analysis. The examiner has not adequately applied the
prior art, taking into account the requirements of each independent claim on appeal.
Further, we believe that the examiner has underestimated the relevance of Smith. It
would appear, for example, that there is no difference between the inactivated vaccine
recited in claim 5 and the vaccine disclosed by Smith in Example 11 (pages 36 and 37).
Because of the lack of claim-by-claim analysis, and because, it appears, the
examiner has not fully appreciated the relevance of Smith, the rejection of all the
appealed claims for obviousness over Zygraich and Ijaz, further taken in view of Smith,
is vacated. Cf. In re Lee, 277 F.3d 1338, 1342, 61 USPQ2d 1430, 1432 (Fed. Cir.
2002) (for judicial review to be meaningfully achieved, agency tribunal must present full
and reasoned explanation of its decision). Under these circumstances, we believe that
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