Appeal No. 2001-1685
Application No. 08/596,698
In our view, the examiner's evidence does not provide a clear suggestion or
expectation of success of the reduction of fibrin formation in the eye upon systemic
administration of protein C. The rebuttal argument of the examiner does not come to
grips with, or provide sufficient rebuttal to appellants' evidence and argument of record
as to the lack of expectation of success upon substituting protein C for heparin to
reduce fibrin formation in the eye. To summarize, the examiner essentially argues that
it would have been obvious to try the substitution of the protein C anticoagulant of Bang
for the heparin anticoagulant of Iverson, even though Bang does not disclose the
effective systemic use of protein C to reduce fibrin formation in the eye. "Obvious to try"
has long been held not to constitute obviousness. In re O'Farrell, 853 F.2d 894, 903, 7
USPQ2d 1673, 1680-81 (Fed. Cir. 1988). A general incentive, as indicated by the
examiner, does not make obvious a particular result, nor does the existence of
techniques by which those efforts can be carried out. In re Deuel, 51 F.3d 1552,1559,
34 USPQ2d 1210, 1215-16 (Fed. Cir. 1995). Stocker is relied on by the examiner for
the disclosure that protein S potentiates the action of protein C. Answer, page 6. We
do not find that Stocker overcomes the deficiencies of the primary combination of
references.
A conclusion as to obviousness is arrived at by reviewing the evidence as a
whole. When considered anew, we find, on balance, that the evidence and arguments
presented by the appellants, taken as a whole, are sufficient to outweigh the evidence
of obviousness provided by the examiner. Newell Cos. v. Kenney Mfg. Co., 864 F.2d
6
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