Appeal No. 2002-2281 Page 4
Application No. 08/302,423
the full length V antigen, the vaccine or composition must contain the antigen
encoded by the construct illustrated in Figure 1.
Upon review of the Answer, and the references relied upon by the
examiner, we are unable to identify any suggestion to utilize a truncated Y. pestis
antigen, one that is missing 67 amino acids of the N-terminal end. See also,
Brief, pages 5 and 6. While the examiner believes that “the burden is upon
[a]pplicant to demonstrate that the resulting peptide produces a materially,
functionally and structurally different protein,” for the forgoing reasons we believe
that this evidence is already of record.
What is not of record, is any evidence suggesting that a person of
ordinary skill in the art at the time the invention was made would have been
motivated to utilize a truncated antigenic protein, having the characteristics of the
one encoded by the construct illustrated in appellants’ Figure 1 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
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