Appeal No. 1999-0413
Application No. 08/294,819
In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967), cert.
denied, 389 U.S. 1057 (1968).
On this record, the issue is focused on the limitation in the claims that
requires the addition of an “amount greater than 300 nM but less than or equal to 50
µM of … [a] heavy metal cation capable of binding to an Aß peptide….” According
to the examiner (Answer, page 3) Maggio discloses a method very similar to the
claimed method, failing only in teaching “cererospinal fluid (CSF) as a sample,
centrifugation to separate aggregates, the instant Zn concentration, or serial dilution
of samples.” Answer, page 4. According to the examiner (id.), Mantyh makes up
for all the deficiencies in Maggio, except for the Zn concentration, by teaching
“assays for amyloid aggregation in CSF by adding labeled beta-amyloid protein,
incubating, centrifuging and detecting (pp. 1171-1172).”
The examiner argues (Answer, page 4) “[w]ith respect to the claimed
concentration of metal ion, the teaching [in Maggio] of a range of about 100 µM to
50 mM encompasses amounts somewhat smaller and greater than the range limits
and therefore teaches or suggests using concentrations less than 100 µM as
claimed.” Accordingly, the examiner concludes (Answer, page 4) that:
It would have been obvious to one of ordinary skill in the art at the time
the invention was made to use concentrations somewhat less than
100 µM (i.e., less than 50 and 25 µM, respectively) in order to use an
effective amount of metal ion as taught by Maggio for any of the
labels, including the alternate labels, taught by Maggio.
However, we note that while a person of ordinary skill in the art may possess
the requisite knowledge and ability to modify Maggio’s method as set forth by the
examiner, the modification is not obvious unless the prior art suggested the
desirability of the modification. In re Gordon, 733 F.2d 900, 902, 211 USPQ 1125,
4
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007