Appeal No. 1997-3811 Page 10
Application No. 08/357,845
In an attempt to establish that appellants’ process, as
defined in representative claim 1, solely involves standard
steps that an ordinarily skilled artisan would have obviously
employed in using any countercurrent chromatographic device in
either Pirkle patent, the examiner (1) suggests that
“optimization” would have led one of ordinary skill in the art
to the claimed process; and (2) relies on alleged admitted
prior art in appellants’ specification and Cahnmann to
establish the obviousness of the herein claimed process.
Of course, it is axiomatic that consideration of the
prior art cited by the examiner must, of necessity, include
consideration of the admitted state of the art found in
appellants' specification. In re Hedges, 783 F.2d 1038, 228
USPQ 685 (Fed. Cir. 1986); In re Davis, 305 F.2d 501, 503, 134
USPQ 256, 258 (CCPA 1962). Additionally, it is well settled
that the relevance of a prior art reference to the obviousness
conclusion is not confined to preferred or illustrative
embodiments. Rather, a prior art reference may be relied upon
for all that it
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