Appeal No. 97-0480
Application No. 07/858,818
modify Sanford with the teachings of Klein to deliver DNA-coated particles to plant cells with a
reasonable expectation of success (Answer, pages 5, 7 and 8).
However, at least one other difference between Sanford and the claimed invention is implicitly
acknowledged by the examiner, i.e., use of an electric discharge induced “shock wave” to accelerate
the particles off the coated carrier sheet. At page 5 of the Answer, the examiner opines that use of an
electric discharge induced shock wave as an acceleration means would have been a routine matter of
design choice.
c. Analysis
To establish a prima facie case of obviousness, there must be both some suggestion or
motivation to modify the reference or combine reference teachings and a reasonable expectation of
success. Furthermore, the prior art must teach or suggest all the claim limitations. In re Vaeck, 947
F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991).
The examiner relies on Sanford’s Example 3, Figs. 2b, 2c, 8a and 8b, to show acceleration of
particles from a flat surface which was stopped by a retaining screen which allowed the unrestrained
particles to continue forward into the target and an apparatus therefore (Answer, page 7). The
examiner equates the macroprojectile of Figs. 8a, 8b and 12 and the stopping plate/means in Figs. 8a
and 12 in Sanford with the recited moveable carrier sheet and retaining screen, respectively (Answer,
page 10).
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