Appeal No. 2001-1264 Page 4
Application No. 08/819,630
requisite fact finding needed in order to properly reach a conclusion of obviousness
under this section of the statute.
For example, the statement of the first rejection which appears in the paragraph
bridging pages 3-4 of the Answer, reads as follows:
Boos et al teach passing body fluid over solid absorption [sic,
adsorption] material which is composed of a porous supporting material to
which functional groups made of natural polyanion chains are covalently
bound. The polyanions are polymers or copolymers of styrene type, such
as styrene sulfonic acid. See column 2, lines 27-37 and 61. General
classes of supports for ion exchange include divinyl-crosslinked
polystyrenes. The fractogel supports can contain anionic functional
groups. See Pliura et al, columns 7, 8 and 9. the specification teaches
chemokine in body fluids. Therefore, it would have been obvious to one
of ordinary skill in the art at the time the invention was made to treat body
fluid containing chemokine with anionic absorbent [sic].
As seen, the examiner has only concluded that it would have been obvious to “treat
body fluid containing chemokine with anionic absorbent [sic].” The examiner has not
explained why one of ordinary skill in the art would have had any reason, suggestion,
motivation, or incentive to combine the prior art facts relied upon in order to arrive at the
claimed subject matter.
The second rejection based upon Yokohari, Charo, and Okarma suffers from the
same deficiency in that the examiner again failed to provide a reason, suggestion,
motivation, or inventive as to why it would have been obvious to combine the relied
upon teachings of the references in order to arrive at the claimed subject matter.
A further reason why the examiner’s position is difficult to review is that the
examiner has made a glaring mistake of fact in stating her position. At page 5 of the
answer the examiner states that “cytokines are generically called chemokines,” citing
page 1, lines 19-20 of the specification. That portion of the specification actually sets
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