Appeal No. 95-0063
Application No. 07/813,868
wool starting material whereas all of the appealed claims
preclude a wool starting material.2
The examiner acknowledges the difference between Maclaren's
method and the claimed method. According to the examiner,
[t]he claimed process differs from this prior art
process only in the choice of the polymer. However, it
is the same process employing the same inventive
concept of binding a desired organic compound to a
carrier polymer and accomplishing the same desired
result of immobilizing the desired organic compound.
See In re Durden, 226 USPQ 359. [Examiner Answer, page
4, first full paragraph].
That analysis is flawed because the examiner does not adequately
establish how a person having ordinary skill in the art would
have arrived at the claimed subject matter as a whole, including
appellant's non-wool starting materials, based on the teachings
found in Maclaren. 35 U.S.C. § 103. The examiner is not at
liberty to dissect the claims; to remove specific limitations; to
redraft the claims as though they called for "a carrier polymer"
broadly; and to hold that the redrafted method would have been
obvious over Maclaren's disclosure of the same general process
using a partially oxidized wool starting material. See In re
2With respect to the polymeric starting material, claims
25 through 31, 33 and 34 are broader than claims 15 through 24
and 32. The former claims preclude wool, but "read on" other
polypeptide structures. The latter are restricted to polymers
which are insoluble in water and have a non-polypeptide
structure.
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