Appeal No. 95-4342
Application 07/938,832
however, would not have made the modification obvious unless the prior art suggested the
desirability of the modification. In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127
(Fed. Cir. 1984). Here, we find no reason stemming from the prior art which would have
led a person having ordinary skill to the claimed method. In our judgment, the only reason
or suggestion to combine the references in the manner proposed by the examiner comes
from appellant’s specification. The rejection of claims 3 through 7, 14 through 16, 18 and
23 through 32 under 35 U.S.C. § 103 is reversed.
OTHER ISSUE
We note that the carbohydrate derivatizing agent of kit claims 15, 16 and 18 differs
from the derivatizing agent of method claims 3-7, 14 and 23-32 in at least one significant
aspect: it is not limited to one capable of covalently binding the free functional groups of a
carbohydrate. Despite this difference, claims 15, 16 and 18 were included in the rejection
of all the claims under 35 U.S.C. § 103 without comment. Thus, it appears that the
patentability of the kit claims has not been separately considered. Upon return of the
application to the examining group, we urge the examiner to take a step back and ensure
that the patentability of the kit claims has been separately evaluated.
REVERSED
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