Appeal No. 2001-2410 Page 6
Application No. 08/914,700
Hossom et al[.] teach that the result of the assay can be read
directly on the filter membrane, it clearly indicates that any
complexes formed between the labeled reagent, the binding
substance and the analyte are retained on the filter membrane.
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial
burden of presenting a prima facie case of obviousness.” In re Rijckaert, 9 F.3d
1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993). The obviousness analysis
must be based on the invention as a whole. See General Foods Corp. v.
Studiengesellschaft Kohle mbH, 972 F.2d 1272, 1275, 23 USPQ2d 1839, 1840
(Fed. Cir. 1992) (“[E]ach claim is an entity which must be considered as a whole.”
(emphasis in original)).
“The test for obviousness is what the combined teachings of the
references would have suggested to one of ordinary skill in the art.” In re Young,
927 F.2d 588, 591, 18 USPQ2d 1089, 1091 (Fed. Cir. 1991). That is, the test is
“whether the teachings of the prior art, taken as a whole, would have made
obvious the claimed invention.” In re Gorman, 933 F.2d 982, 986, 18 USPQ2d
1885, 1888 (Fed. Cir. 1991).
In this case, we conclude that the examiner has not made out a prima
facie case of obviousness. The claims on appeal place specific limitations on the
porous support used in the claimed method. The porous support must have “a
maximum effective pore size smaller than a complex formed between the
analyte, the binding substance, and the detector substance and . . . [a] minimal
effective pore size larger than each of the analyte, the binding substance and the
detector substance if a precipitable complex with an analyte is not formed, so
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