Appeal No. 95-1779
Application 07/683,130
of preventing loss of the enzyme (allowing its reuse) and
increased stability of the enzyme.
Thereafter, the examiner repeats the arguments made in support
of the rejection in view of Christie’s teaching.
Frankly, since neither Christensen or Hatcher appear to
have had any interest in immobilizing the enzymes which they
added to industrial waters to prevent biological slimes from
depositing on the marine surfaces, we find no reasonable basis
in the combined prior art teachings to (1) immobilize the
enzymes on the marine surfaces to prevent their loss or
improve their stability, or (2) chemically bond the active
enzymes to an inert matrix of any marine coating applied to
marine surfaces. As said in Ex parte Tanksley, 37 USPQ2d
1382, 1386 (Bd. Pat. App. & Int. 1994):
With respect to the rejections under 35 U.S.C. §
103,
we find that the cited prior art provides no suggestion
which would have led a person having ordinary skill from
“here to there” . . . . The mere fact . . . that the
prior art could be so modified would not have made the
modification obvious unless the prior art suggests the
desirability of the modification. In re Gordon, 733 F.2d
900, 221 USPQ 1125 (Fed. Cir. 1984) . . . .
Conclusion
We reverse the examiner’s rejection of Claims 1-5, 13,
23-24, and 26-31 under 35 U.S.C. § 103 as being unpatentable
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