Appeal No. 2001-1298 Page 5
Application No. 08/304,602
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. The
statement of the rejection, however, does not establish the requisite suggestion
in the art to combine that knowledge. In this regard, we remind the examiner
that “a rejection cannot be predicated on the mere identification … of individual
components of claimed limitations. Rather particular findings must be made as
to the reason the skilled artisan, with no knowledge of the claimed invention,
would have selected these components for combination in the manner claimed.”
Ecolochem, 227, F.3d at 1375, 56 USPQ2d at 1076, quoting Kotzab, 217 F.3d at
1371, 55 USPQ2d at 1317.
The examiner relies (Answer, page 5) on Jawetz to “teach that the use of
antimicrobial drugs to treat Gram-positive microbial infections was known as was
the use of antimicrobial drugs in combination.” In addition, the examiner relies
(Answer, page 6) on Hawiger to teach the “conjugation of small peptides to
molecules such as immunoglobulin to increase their biological half-life.”
However, in our opinion, neither of these references make up for the deficiencies
found in the primary reference.
Accordingly, we reverse each of the three rejections under 35 U.S.C.
§ 103.
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