Appeal No. 1999-1423
Application 08/261,639
suitable materials including nitrocellulose and glass fiber compositions are known.
Answer, page 5.
The examiner suggests that “it would be within the skill of the artisan to arrange
the components as would be useful and convenient to performing the assay.” Id.
Tzeng is indicated by the examiner to provide for a control region downstream from the
reactive zones of the device. While the examiner suggests that “Tzeng teach that the
method can be adapted to testing for anti-HIV antibodies”, the examiner has not
provided a specific reference to, and we do not find such a specific statement in Tzeng
regarding the adaptability of the assay and device of Tzeng for testing HIV-antibodies.
Berry is relied on by the examiner for the disclosure of numerous assays that test
for HIV-1, HIV-2, or both. For this reason, the examiner finds (Answer, page 6) that, “It
would have been obvious to one of ordinary skill in the art at the time the invention was
made to use the assay device and method disclosed by Tzeng et al and modify it to test
for antibodies reactive against HIV-1, HIV-2, or both.”
The conclusion that the claimed subject matter is prima facie obvious must be
supported by evidence, as shown by some objective teaching in the prior art or by
knowledge generally available to one of ordinary skill in the art that would have led that
individual to combine the relevant teachings of the references to arrive at the claimed
invention. See In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir.
1988). Rejections based on § 103 must rest on a factual basis with these facts being
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