Appeal No. 1997-4138
Application No. 08/384,681
conjugate of predetermined concentration of at least about 15 micrograms per ml in liquid
form as claimed. The only source of a suggestion to use the particular concentration of the
working reagent presently claimed is appellants’ own disclosure of the invention.
Therefore, we must conclude that the examiner has relied on impermissible hindsight in
making his determination of obviousness. In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d
1780, 1784 (Fed. Cir. 1992) (“It is impermissible to engage in hindsight reconstruction of
the claimed invention, using the applicant’s structure as a template and selecting elements
from references to fill the gaps”).
For these reasons, the examiner's rejections of the claims, directed to the assay
and kit for performing the assay, are fatally defective since they do not properly account for
and establish the obviousness of the claimed subject matter as a whole. Where the
examiner fails to establish a prima facie case, the rejection is improper and will be
overturned. In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
Therefore the rejections of claims 27 - 31, 33 - 44, 46 - 52, 54-55, and 62 - 63 under 35
U.S.C. § 103 are reversed.
Claims 56 - 61:
Claims 56 - 61 stand on a different footing as compared to the claims directed to
an immunobinding assay and a kit for performing such an assay discussed above. Claims
56 - 61 do not require the presence or use of a working reagent conjugate of
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