Appeal No. 95-4342
Application 07/938,832
comparison to labeled standards. This method corresponds roughly to the labeling,
separating and identifying steps of the present method.
According to the examiner, “[i]t would have been obvious to the worker of ordinary
skill in the art . . . having the above mentioned references before him to select the
methylated carbohydrates as the monosaccharide derivatives in the electrophoretic
separation thereof, to determine the structural relationships of such monosaccharides
since Jackson teaches the advantages of the highly sensitive electrophoretic separation,
and each of Levery and Lindberg teach the specific advantages of employing methylated
monosaccharides in such methods.” See the Answer, the paragraph bridging pages 7
and 8.
If we understand the examiner’s position correctly, it is that it would have been
obvious to arrive at the present invention by combining the derivatizing and hydrolyzing
steps of Levery’s or Lindberg’s method with the labeling, separating and identifying steps
of Jackson’s method. The examiner’s proposed reason or suggestion for combining the
2
references seems to be simply that both methods have advantages.
We have no doubt that the prior art could be modified in a manner consistent with
appellant’s specification and claims. The fact that the prior art could be so modified,
2As stated in Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568,
1573, 37 USPQ2d 1626, 1629 (Fed. Cir. 1996) (citation omitted), “It is well-established
that before a conclusion of obviousness may be made based on a combination of
references, there must have been a reason, suggestion or motivation to lead an inventor to
combine those references.”
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