Appeal No. 2001-0531 Page 5
Application No. 08/216,592
of the desirability of making the specific combination that was made by the
applicant.” In re Kotzab, 217 F.3d 1365, 1369-70, 55 USPQ2d 1313, 1316 (Fed.
Cir. 2000). That is, “the question is whether there is something in the prior art as
a whole to suggest the desirability, and thus the obviousness, of making the
combination.” Lindemann Maschinenfabrik GMBH v. American Hoist & Derrick
Co., 730 F.2d 1452, 1462, 221 USPQ 481, 488 (Fed. Cir. 1984).
We agree with Appellants that Glass and Mangelsdorf do not support a
prima facie case of obviousness. Although Glass and Mangelsdorf together
disclose all the elements of the claimed assay method, the examiner has not
established that those skilled in the art would have been led to combine those
elements in the manner claimed.
The examiner’s position is that those skilled in the art would have been led
to combine RXR with Glass’ assay system because Glass states that their
“results suggest that by forming heterodimers, more elab-orate [sic] control of
transcription can be achieved.” Page 697 (abstract). The examiner also points
to page 706 of the reference, which she characterizes as stating that
dimerizations may occur between other members of the steroid hormone
receptor family. The passage relied on states:
We speculate that interactions of the type described between the
thyroid hormone and retinoic acid receptors may occur between
other members of the ligand-dependent transcription factor gene
family. Such interactions may be required to achieve the necessary
complexity of transcriptional control that serves to regulate the
processes of growth, development, and homeostasis.
Glass, page 706.
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