Appeal No. 2001-1499 Page 7
Application No. 08/957,654
Gillis “disclose that alpha-antitrypsin would be a useful additive for … IL-1-
containing compositions.”
While the examiner argues (id.), “the instant claims contain no language
which would exclude from their scope the presence of IL-1”, there can be no
doubt that the claims require a “therapeutically effective amount of alpha-1-
antitrypsin.” Therefore, the examiner’s finding that Gillis “do not teach that alpha-
antitrypsin in and of itself has any intrinsic chronic wound-treating properties,”
runs counter to finding the claimed invention obvious over Gillis. Obviousness
can only be established by combining or modifying the teachings of the prior art
to produce the claimed invention where there is some teaching, suggestion, or
motivation to do so found either in the references themselves or in the
knowledge generally available to one of ordinary skill in the art. See In re Fine,
837 F.2d 1071, 1075, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
Accordingly, we reverse the rejection of claims 1-3, 7 and 8 under 35
U.S.C. § 103 as being unpatentable over Gillis.
Gillis in view of Rao:
According to the examiner (Answer, page 5), “[w]hile Gillis et al[.] suggest
the use of alpha-antitrypsin in compositions used to treat chronic wounds, Gillis
et al. do not teach that alpha-antitrypsin in and of itself has any intrinsic chronic
wound-treating properties.” Therefore, the examiner relies (id.) on Rao who
suggest “that the topical administration of alpha-1-antitrypsin would be useful in
the treatment of chronic wounds.” In support of this position, the examiner
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