Appeal No. 2002-2284 Page 4
Application No. 09/176,492
components of Medium K-1 may very well support the growth of kidney cell lines
other than canine kidney. Additionally, Taub et al. disclose that EGF increases
the MDCK cell growth.” Upon review of Taub, it is our opinion that the examiner
has misapprehended the facts in evidence. According to Taub (page 407),
“Medium K-1 consists of serum-free medium (SFFD) supplemented with insulin,
transferrin, prostaglandin E1 (PGE2), triiodothyronine (T3), and hydrocortisone.”
At page 408, Taub state “Norepinephrine, epidermal growth factor (EGF), and
fibroblast growth factor (FGF) also increased MDCK cell growth…. However, the
growth stimulatory effects of these factors were only observed in SFFD
supplemented with insulin and transferrin, but not in Medium K-1.” Therefore,
we cannot agree with the examiner’s statement (Answer, page 7) that Taub
“through their disclosed use of EGF to promote MDCK cell growth would provide
motivation for incorporating the teachings of Bettger et al.”
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
from the cited references, not from the application’s disclosure. See In re Dow
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