Appeal No. 2001-1499 Page 5
Application No. 08/957,654
claim.” Gechter v. Davidson, 116 F.3d 1454, 1457, 43 USPQ2d 1030, 1032
(Fed. Cir. 1997).
Accordingly, we reverse the rejection of claim 7 under 35 U.S.C. § 102(b)
as anticipated by Lezdey.
THE REJECTIONS UNDER 35 U.S.C. § 103:
Schwarz in view of Clark:
According to the examiner (Answer, page 3), Schwarz “teach a
composition for use in healing wounds in which the composition can comprise
0.5-90 mg/ml alpha-1-antitrypsin.” The examiner recognizes, however, (Answer,
bridging sentence, pages 3-4) that Schwarz “do not teach the use of transgenic
alpha-1-antitrypsin” as is required by appellants’ claim 9. To make up for this
deficiency the examiner relies on Clark, who teaches the transgenic production
of alpha-1-antitrypsin. Answer, page 3. According to the examiner, a person of
ordinary skill in the art at the time the invention was made would have used
Clark’s transgenic AAT because it would be expected to exhibit the inhibitory
properties desired by Schwarz, and because the transgenic source would have
been expected to be a convenient source of large amounts of AAT.1 Answer,
page 4.
In response, appellants argue (Brief, page 12) that the examiner’s
rejection is based on hindsight reconstruction of their claimed invention, and that
1 We note that Clark teaches (page 2) the need for a high yield, low cost process for the
production of biological substances such as correctly modified eukaryotic polypeptides, and that
the first aspect of his invention is to provide a method of producing a substance comprising a
polypeptide transgenically.
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