Appeal No. 2001-0400
Application No. 08/751,624
Heinmets teaches in Tables 1 and 3 how time of exposure is
related to decrease in infectivity and one would have a high
expectation of success in employing a lower concentration of dye
with a longer time of exposure to achieve the same result.
Examiner’s Answer, pages 5-6.
“In proceedings before the Patent and Trademark Office, the Examiner bears the
burden of establishing a prima facie case of obviousness based upon the prior art.” In
re Fritch, 972 F.2d 1260, 1265, 23 USPQ2d 1780, 1783 (Fed. Cir. 1992). “The
consistent criterion for determination of obviousness is whether the prior art would have
suggested to one of ordinary skill in the art that this process should be carried out and
would have a reasonable likelihood of success, viewed in the light of the prior art. Both
the suggestion and expectation of success must be founded in the prior art, not in the
applicant’s disclosure.” In re Dow Chemical Co., 837 F.2d 469, 473, 5 USPQ2d 1529,
1531 (Fed. Cir. 1988) (citations omitted).
“‘Under section 103, teachings of references can be combined only if there is
some suggestion or incentive to do so.’ Although couched in terms of combining
teachings found in the prior art, the same inquiry must be carried out in the context of a
purported obvious ‘modification’ of the prior art. The mere fact that the prior art may be
modified in the manner suggested by the Examiner does not make the modification
obvious unless the prior art suggested the desirability of the modification.” Id. at 1266,
23 USPQ2d at 1783 (citations omitted, emphasis in original).
The examiner argues that those skilled in the art would have found it
obvious to practice the claimed method, employing a dye concentration of 0.5 µM
to 2 µM, in view of Heinmets. However, Heinmets consistently uses a dye
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