Appeal No. 1996-0223
Application No. 07/931,563
record convey or suggest that knowledge, is to fall victim to the insidious effect of a hindsight syndrome
wherein that which only the inventor taught is used against its teacher”).
As to claims 17 and 32, it is the examiner’s opinion that “formation of three conformational
states in the presence of calcium, only one of which binds the calcium-dependent antibody, is
considered to be an intrinsic property of prothrombin” (answer, page 6). Assuming arguendo that
prothrombin is inherently capable of forming three conformational states, the examiner has not
established that binding calcium to metal-free prothrombin induces not one but two different
conformational changes in the structure of prothrombin or that Swanson’s calcium-dependent antibody
will differentially bind to only one of the two calcium-induced conformational states to the substantial
exclusion of the other. As noted by in appellants’ reply brief (pages 5-6), the answer never addressed
this issue.
Based on the foregoing, we conclude that the examiner has not established a prima facie case
of obviousness as to claims 2, 3, 5-8, 17, 23-28 and 32 over Swanson in view of any one or more of
Falb, Zimmerman and Furie 1979. Having concluded that the examiner has not established a prima
facie case of obviousness, we do not reach appellants’ discussion of rebuttal evidence on pages 14-19
of the brief and on pages 3-5 of the reply brief.
III. Rejection of claims 2, 3, 5-8, 17, 23-28 and 32 under 35 U.S.C. § 103 as being unpatentable
over Furie ‘320 in view of Falb, Zimmerman and Furie 1979.
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