Appeal No. 2001-1576 Page 5
Application No. 08/460,622
ordinary skill in the art at the time the invention was made to prepare a different
directed human immune globulin against Staphylococcus epidermidis, having
opsonophagocytic bactericidal activity as is required by the claimed invention.
We are also unable to identify from the evidence of record, any motivation
for the use of TCA extracted antigens. As the examiner points out (Answer,
page 6), “neither reference particularly discloses a method where [sic] the S.
epidermidis antigens are obtained by TCA extraction.” While the examiner
asserts (id.), Sutherland teaches “that teichoic acids of Gram-negative bacteria
are antigenic determinants and have great immunological importance,” the
examiner failed to identify any evidence suggesting that TCA extracts of S.
epidermidis would be useful in preparing a directed human immune globulin
having opsonophagocytic bactericidal activity against Staphylococcus
epidermidis as is required by the claimed invention. Prima facie obviousness
based on a combination of references requires that the prior art provide “a
reason, suggestion, or motivation to lead an inventor to combine those
references.” Pro-Mold and Tool Co. v. Great Lakes Plastics Inc., 75 F.3d 1568,
1573, 37 USPQ2d 1626, 1629 (Fed. Cir. 1996).
[E]vidence of a suggestion, teaching, or motivation to combine may
flow from the prior art references themselves, the knowledge of one
of ordinary skill in the art, or, in some cases, from the nature of the
problem to be solved. . . . The range of sources available, however,
does not diminish the requirement for actual evidence. That is, the
showing must be clear and particular.
In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999)
(citations omitted). The suggestion to combine prior art references must come
from the cited references, not from the application’s disclosure. See In re Dow
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