Appeal No. 1999-1433
Application 08/453,852
case, the examiner must establish that one of ordinary skill in the art would have
understood from the teachings of the applied prior art that (i) TNF-" is an adjuvant, and
(ii) TNF-" exerts its adjuvant effect in an antigen-specific manner. This the examiner
has not done.
Here, we find the examiner’s diagram with respect to the black box to be
disingenuous. Answer, p. 6. As we understand it, the examiner’s model is based on the
teachings of Beutler or Kornbluth and depicts the administration of LPS (a non-tumor
substance) in an animal which results in an interaction with TNF. However, because the
references do not disclose the nature of the LPS-TNF interaction, the examiner has
inserted a block box, out of which pops the appellants’ invention. The problem is that we
do not find, and the examiner has not pointed out, any teachings or suggestions in
Beutler or Kornbluth that TNF acts as an adjuvant to enhance the toxic effects of LPS.
On this record, we only find the suggestion to use TNF as an adjuvant in the appellants’
disclosure. Thus, we agree with the appellants that the examiner has engaged in
impermissible hindsight in making her determination of obviousness. In re Gorman,
933 F.2d 982, 987, 18 USPQ2d 1885, 1888 (Fed. Cir. 1991)(“It is impermissible,
however, simply to engage in a hindsight reconstruction of the claimed invention, using
the applicant’s structure as a template and selecting elements from references to fill the
gaps”); Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1138, 227 USPQ 543, 547
(Fed. Cir. 1985); W.L. Gore & Assocs. v. Garlock, Inc., 721 F.2d 1540, 1553,
220 USPQ 303, 312-313 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984)(“To imbue
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