Appeal No. 2004-0647 Page 9
Application No. 09/941,965
explained how the claimed composition (i.e., an acid hydrolyzed and neutralized IgG
fraction that has been clarified by centrifugation to remove insoluble material) can be
the same as Kempf’s acid hydrolyzed IgG fraction that was not centrifuged and
decanted to remove insoluble material. On the other hand, even if we were to agree
with the examiner that it would have been obvious for one skilled in the art to “separate
any precipitate in a solution by centrifugation and decanting,” we see nothing in Kempf
that suggests the time period required by the claims. The examiner “extrapolate[s] from
Figure 3 [of] Kempf” in an effort to show that “treating an immunoglobulin solution with
acid pH for 1 hour effectively inactivates virus such as vesicular stomatitis virus and
inactivation reaches a plateau beyond one hour” (Answer, page 5). On the contrary,
Figure 3 merely shows that “[t]he inactivation of VSV at low pH in the presence of
pepsin is accomplished within 7 to 8 hours” (Kempf, Figure 3, and page 426). Kempf
does mention that some other viruses (HIV, for example) are inactivated in less time,
but no data are shown, and no specific times are mentioned (id., page 426).
We have no doubt that the prior art could be modified in a manner consistent
with appellants’ specification and claims. The fact that the prior art could be so
modified, however, would not have made the modification obvious unless the prior art
suggested the desirability of the modification. In re Gordon, 733 F.2d 900, 902, 221
USPQ 1125, 1127 (Fed. Cir. 1984).
In our opinion, the only reason or suggestion to modify Kempf in the manner
proposed by the examiner comes from appellants’ specification. Accordingly, we find
that the examiner has not established a prima facie case of obviousness for claims 1-4,
and the rejection of the claims under 35 U.S.C. § 103 is reversed.
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