Appeal No. 2001-0756 Page 3
Application No. 08/666,400
According to the examiner (id.) neither reference teaches “a post coupling
reaction to quench … the unreacted coupling reagent.” Therefore, the examiner
relies on Harlow to “teach a post coupling reaction to quench unreacted coupling
reagent.” Id. The examiner relies on Arnold, Cuatrecasas and Lau to teach
various aminated supports including glass, cellulose, agarose beads, polystyrene
and polypropylene. Answer, pages 6-7.
We note that none of the references relied on by the examiner teach the
use of methanol in the presence of triethylamine as is required in step A of
appellants’ claimed invention. In order to make up this deficiency, the examiner
asserts (Answer, page 6), “the use of ethanol/triethylamine [as taught by both
Tietze and Glüsenkamp] for the reaction of squaric acid with amine containing
compounds … renders obvious the use of methanol/triethyl-amine for the
reaction of squaric acid with amines.”
The examiner, however, provides no evidence to support his assertion. In
this regard we note that “[i]t is impermissible to use the claimed invention as an
instruction manual or ‘template’ to piece together the teachings of the prior art so
that the claimed invention is rendered obvious.” In re Fritch, 972 F.2d 1260,
1266, 23 USPQ2d 1780, 1784 (Fed. Cir. 1992), citing In re Gorman, 933 F.2d
982, 987, 18 USPQ2d 1885, 1888 (Fed. Cir. 1991). Rather, the examiner may
establish a case of prima facie obviousness based on a combination of
references “only by showing some objective teaching in the prior art or that
knowledge generally available to one of ordinary skill in the art would lead that
individual to combine the relevant teachings of the references.” Id., 972 F.2d at
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