Appeal No. 2002-1547 Page 5
Application No. 09/259,434
dimers purified to greater than 90% purity. . . . Relying on Sirtori’s
method for Apo-A1-M purification, a person of ordinary skill in the
art would fail to purify dimers of Apo-AI-M away from monomers of
Apo-AI-M because the method cannot produce Apo-A1-M purified
to greater than 90%. Thus, Sirtori, taken as a whole, does not
provide the motivation or the means to purify the Apo-A1-M dimer
preparations of greater than 90% purity.
Appeal Brief, pages 8-9. The examiner acknowledged Appellants’ argument on
this point, and responded that “[t]he rejection acknowledges these failings.”
Examiner’s Answer, page 6.
“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 prima facie case must account for all the limitations of the claims.
See General Foods Corp. v. Studiengesellschaft Kohle mbH, 972 F.2d 1272,
1275, 23 USPQ2d 1839, 1840 (Fed. Cir. 1992) (“[E]ach claim is an entity which
must be considered as a whole,” emphasis in original); In re Angstadt, 537 F.2d
498, 501, 190 USPQ 214, 217 (CCPA 1976) (“[W]e must give effect to all claim
limitations,” emphasis in original).
We agree with Appellants that Sirtori does not support a prima facie case
under 35 U.S.C. § 103. The claims on appeal are limited to compositions
comprising Apo AI-M dimers “purified to at least 90% homogeneity.” The
specification discloses that the claimed composition can be isolated from plasma
by two steps of chromatography on a “Sephacryl S-300 HR column (2.6 x 300
cm).” Page 10. By contrast, Apo AI-M monomers were purified by
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