Appeal No. 2002-1291 Page 10
Application No. 08/693,052
It would have been obvious to one of ordinary skill in the art at the
time the invention was made to inactivate poxviruses of Mayr [II] as
taught by [Mayr I] for expected equivalent function because [Mayr I]
discloses inactivated poxviruses of different strains encompassed
by the instant claims.
Examiner’s Answer, page 8.
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial
burden of presenting a prima facie case of obviousness. Only if that burden is
met, does the burden of coming forward with evidence or argument shift to the
applicant.” In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir.
1993). The test of obviousness is “whether the teachings of the prior art, taken
as a whole, would have made obvious the claimed invention.” In re Gorman, 933
F.2d 982, 986, 18 USPQ2d 1885, 1888 (Fed. Cir. 1991). In addition, there must
be some motivation, teaching or suggestion to combine the references to arrive
at the claimed invention. See In re Lee, 277 F.3d 1338, 1342-43, 61 USPQ2d
1430, 1433-34 (Fed. Cir. 2002)
Claims 23 and 24 add the limitation that “the poxviruses are inactivated,”
and claim 30 adds the limitation that “the poxvirus strains are inactivated.” We
interpret those limitations as requiring all of the poxvirus components of the
composition to be from inactivated poxviruses.
As acknowledged by the rejection, Mayr I teaches a process for the
inactivation of poxvirus strains that are intended to induce non-specific immunity.
Mayr II, however, teaches a composition comprising an antigen for activating a
specific immune response, i.e., the ORF virus D1701, as well as a component for
inducing a paramunity response, i.e., DUPHAMEN®. While the combination may
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