Appeal No.2001-1258 Page 9
Application No. 08/413,805
With regard to the pharmaceutically acceptable composition of claim 4, we
agree with the examiner that such a composition would have been obvious as
well. For example, Bumol teaches that recombinant GA733-2 could be used to
create novel antibodies (page 16, lines 57-62) or “for development of potential
anti-adenocarcinoma vaccines” (page 17, lines 14-15). These teachings would
have suggested combining the recombinant, soluble GA733-2 variant with a
pharmaceutically acceptable carrier such as water or physiological saline. Thus,
the pharmaceutically acceptable composition of claim 4 would have been prima
facie obvious in view of the cited references.
Appellants argue that the cited references do not suggest the claimed
polypeptide. Appellants argue that Szala and Bumol do not teach a GA733-2
variant truncated only at the C-terminus (Appeal Brief, page 6) and that “Johnson
and Hussey fail to teach or suggest GA733, much less any modifications thereof”
(Appeal Brief, page 8).
This argument is not persuasive. “Non-obviousness cannot be
established by attacking references individually where the rejection is based
upon the teachings of a combination of references.” In re Merck & Co., Inc., 800
F.2d 1091, 1097, 231 USPQ 375, 380 (Fed. Cir. 1986). The test of obviousness
is “whether the teachings of the prior art, taken as a whole, would have made
obvious the claimed invention.” In re Gorman, 933 F.2d 982, 986, 18 USPQ2d
1885, 1888 (Fed. Cir. 1991). For the reasons discussed in detail above, we
conclude that the combined teachings of the cited references would have
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