Appeal No. 95-0386
Application No. 07/854,122
art are substantial. On this record, the examiner has not
explained how Wu's disclosure would have led a person having
ordinary skill from "here to there," i.e., from the prior art
process using trace amounts of amino acid to the claimed
process using much greater amounts of amino acid.
The rejection under 35 U.S.C. § 103 is reversed.
In an effort to meet the molar ratio limitations recited
in step (c) of independent claims 1, 10, and 18, the examiner
refers to the "BACKGROUND OF THE INVENTION" portion of Wu,
column 2, lines 3 through 17. There, Wu refers to U.S. Patent
No. 3,920,026, issued November 18, 1975, to Warfield et al.
(Warfield). As correctly pointed out by appellants, however,
the examiner has not set forth a ground of rejection of any
claim or claims based on Warfield (Reply Brief, page 4, first
full paragraph).
Accordingly, we remand this application with instructions
that the examiner step back and reevaluate the patentability
of claims 1 through 24 in light of U.S. Patent No. 3,920,026
(Warfield). The examiner should engage in a claim-by-claim
analysis. If the examiner believes that any claim or claims
are unpatentable over Warfield, the examiner should set forth
-7-
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007