Appeal No. 2001-1650
Application No. 08/898,085
Most if not all inventions arise from a combination of old
elements. Y Thus, every element of a claimed invention may often
be found in the prior art. Y However, identification in the prior art of
each individual part claimed is insufficient to defeat patentability of
the whole claimed invention. Y Rather, to establish obviousness
based on a combination of the elements disclosed in the prior art,
there must be some motivation, suggestion or teaching of the
desirability of making the specific combination that was made by
the applicant. (Citations omitted.)
The examiner’s prima facie case of obviousness must be supported by
substantial evidence. See In re Lee, 277 F.3d 1338, 1342, 61 USPQ2d 1430,
1432 (Fed. Cir. 2002).
Because we do not find the examiner’s holding of prima facie obviousness
to be supported by substantial evidence, we reverse both of the rejections under
' 103.
As pointed out above, the examiner’s holding of obviousness over
Greenquist in view of Ijsselmuiden is based on the fact that Ijsselmuiden teaches
that a vacuum pump allows for a more rapid immunoassay and that multiple
antigens can be tested in a single run without affecting the time required for
performing the assay (Examiner’s Answer, page 4). Similarly, the examiner
combines Clark with Greenquist because Clark teaches that use of a vacuum
pump improves the speed of the assay process (Examiner’s Answer, page 6).
However, there is nothing in Greenquist, Ijsselmuiden or Clark, to suggest
that speed would have been desirable in Greenquist’s assay methods. Rather,
Greenquist seems to suggest the opposite. Greenquist’s device uses simple
diffusion to allow the sample to pass through the testing layers at a controlled
rate, rather than using a device to accelerate the sample’s passage through the
testing layer. Moreover, in a preferred embodiment (column 14, lines 43-51),
Greenquist emphasizes that
5
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007