Appeal No. 2006-1517 Page 12
Application No. 09/976,423
art or that knowledge generally available to one of ordinary skill in the art would lead
that individual to combine the relevant teachings of the references.’” In re Fritch, 972
F.2d 1260, 1265, 23 USPQ2d 1780, 1783 (Fed. Cir. 1992) (citations omitted). “[T]he
‘motivation-suggestion-teaching’ test asks not merely what the references disclose, but
whether a person of ordinary skill in the art, possessed with the understandings and
knowledge reflected in the prior art, and motivated by the general problem facing the
inventor, would have been led to make the combination recited in the claims.” In re
Kahn, 441 F. 3d 977, 988, 78 USPQ2d 1329, 1337 (Fed. Cir. 2006).
In this case, the examiner has not adequately explained why a person of ordinary
skill in the art would have been found it obvious to package the reagents taught by
either Rosen or Tarkowski into a kit that would meet the limitations of instant claim 106.
Rosen teaches a method of identifying organ donors having livers less likely to be
reinfected by hepatitis C virus (HCV). See ¶ 0007. Rosen teaches that the TNF-α gene
has a polymorphic position at –308: the allele TNF308.1 has a G at this position while
the allele TNF308.2 has an A. See ¶ 0035. Rosen also teaches that “[k]nown TNF-β
polymorphisms include the TNFc locus, the aa13 locus, the aa26 locus and the NcoI
locus.” See ¶ 0028.
Rosen amplified and sequenced polymorphic positions in the TNF-α and TNF-β
genes and found that livers from donors with the TNF308.2 allele in the TNF-α gene
were reinfected by HCV more often and more severely than livers from donors with the
TNF308.1 allele. See ¶ 0066. By contrast, “[t]here was no correlation between the
TNF-β alleles and time to recurrence, severity of recurrence or the prevalence of
rejection.” ¶ 0067.
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