Appeal No. 2001-1576 Page 4
Application No. 08/460,622
staphylococci, streptococci, and E. coli, Serratia, and Pseudomonas organisms.
Ultimate success will depend on well-characterized and standardized IVIG
products.” In other words, it would have been obvious to explore this general
approach that seems to be a promising field of experimentation, where the prior
art gave only general guidance as to the particular form of the claimed invention
or how to achieve it.
Therefore, we cannot agree with the examiner’s statement (Answer, page
5) that in view of the combination of Fischer with Etzioni “one of ordinary skill in
the art at the time the invention was made would have had a reasonable
expectation of success in producing a directed human immune globulin for
treatment of S. epidermidis infections….” As discussed above, it is our opinion
that Fischer does not provide a person of ordinary skill in the art with the
guidance necessary to establish a reasonable expectation of success. Instead,
Fischer simply invites others to experiment with directed IVIG against
staphylococcus and other bacteria. Stated differently, based on the teachings of
Fischer it would have been obvious-to-try to prepare a directed human immune
globulin having opsonophagocytic bactericidal activity against Staphylococcus
epidermidis; “obvious to try,” however, is not the standard of obviousness. In re
O’Farrell, 853 F.2d 894, 903-04, 7 USPQ2d 1673, 1681 (Fed. Cir. 1988).
Furthermore, given the emphasis the examiner placed on Etzioni, and her
statement (Answer, page 5) that a person of ordinary skill in the art would have
had a reasonable expectation of success using a commercially available product,
such as Sandoglobulin, we are unable to identify any motivation for one of
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