Appeal No. 2001-2524 Page 10
Application No. 08/369,295
1 USPQ2d 1241, 1246 (Fed. Cir. 1986). In this regard we note the direction
provided by In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir.
1991):
Where the subject matter has been rejected as obvious in view of a
combination of prior art references, a proper analysis under [35
U.S.C.] § 103 requires, inter alia, consideration of two factors (1)
whether the prior art would have suggested to those of ordinary
skill in the art that they should make the claimed composition or
device, or carry out the claimed process; and (2) whether the prior
art would also have revealed that in so making or carrying out,
those of ordinary skill would have a reasonable expectation of
success…. Both the suggestion and the reasonable expectation of
success must be founded in the prior art, not in the applicant’s
disclosure.
On this record, the examiner failed to establish that a person of ordinary
skill in the art would have had a reasonable expectation of success in obtaining
an antigen conjugate that is capable of eliciting a protective immune response to
streptococcal infection when administered mucosally. In the absence of a
reasonable expectation of success, one is left with only an “obvious to try”
situation which is not the standard of obviousness under 35 U.S.C. § 103. See
In re O’Farrell, 853 F.2d 894, 903, 7 USPQ2d 1673, 1680. In our opinion, Jones
merely provides a hope, that upon further research, a protective antibody may
eventually be obtained, not a reasonable expectation of success.
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