Appeal No. 09/975,899 Page 5
Application No. 2006-0292
invention from the prior art. In making this evaluation, all facts must be
considered. The Patent Office has the initial duty of supplying the factual basis
for its rejection. It may not, because it may doubt that the invention is patentable,
resort to speculation, unfounded assumptions or hindsight reconstruction to
supply deficiencies in its factual basis. To the extent the Patent Office rulings are
so supported, there is no basis for resolving doubts against their correctness.
Likewise, we may not resolve doubts in favor of the Patent Office determination
when there are deficiencies in the record as to the necessary factual bases
supporting its legal conclusion of obviousness.” In re Warner, 379 F.2d 1011,
1017, 154 USPQ 173, 178 (CCPA 1967), cert. denied, 389 U.S. 1057 (1968)
(emphasis in original).
Appellants argue that the examiner has not set forth a prima facie case of
obviousness, contending that the references as combined do not teach in vivo
targeting of ICAM-1 expressed on the surface of endothelial cells. See Appeal
Brief, page 8. According to appellants, the Hallahan references teach that P-
selectin is localized to the vascular lumen and not on the vascular endothelial cell
surface in irradiated tissue. See id. Moreover, appellants assert, Mastrobattista
does not remedy the deficiency of the Hallahan references as Mastrobattista
merely teaches the use of anti-ICAM-1 immunoliposomes to target bronchial
epithelial cells in vitro. See id. at 9. We agree that the examiner has not set forth
a prima facie case of obviousness, and the rejection is reversed.
Hallahan II is relied upon by the examiner for its teaching that irradiation
causes the expression of cell adhesion molecules (CAMs), such as ICAM-1 and
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