Appeal No. 2001-1730 Page 4
Application No. 08/603,182
to enhance the immunogenicity of the protein.” Similarly, the examiner finds (id.),
Man teach, “it is notoriously old and well known in the art that aggregated (i.e.
polymerized) forms of monomeric proteins are more immunogenic.”
Based on this evidence, the examiner concludes (id.), it would have been
obvious to one of ordinary skill in the art at the time of the instant invention was
made to apply the teachings of Man or of Maurer for the purpose of enhancing
immunogenicity. However, in contrast to the claimed invention, the examiner
recognized that ‘443 took measures to ensure no hirudin polymerization took
place. (Answer, page 7). As we understand the facts in evidence on this record,
the relevant question is not whether a person of ordinary skill in the art at the
time the invention was made could expect hirudin to polymerize or whether
hirudin did in fact polymerize in the immunogen preparation of ‘443, but it is
whether the prior art, taken as a whole, would have suggested to a person of
ordinary skill in the art that the carrier molecule technique of ‘443 be abandoned
in favor of the polymerizing/aggregating technique taught in Maurer and Man.
On the facts of this case, a proper 35 U.S.C. § 103 analysis requires
consideration of two questions: was there a suggestion in the prior art to forgo
the carrier protein in the method of ‘443 in favor of a hirudin polymer, and if so
does the prior art provide a reasonable expectation of success that a hirudin
polymer would elicit a favorable immune response? Vaeck.
We remind the Examiner, “[i]n determining whether the claimed invention
is obvious, a prior art reference must be read as a whole and consideration must
be given where the reference teaches away from the claimed invention. Akzo
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