Appeal No. 1996-1960
Application No. 07/975,167
5
which these substrates were made. Moreover, the examiner has failed to point out and we do not find
where McCroskey, Farnham, Blair and/or Rauscher disclose or suggest either substrates for measuring
lipase activity or C -C fatty acids as blocking groups. Therefore, while
5 30
the references could be combined as the examiner argues, the examiner has failed to provide a
coherent reason why the references should be combined. The mere fact that the prior art could be so
modified would not have made the modification obvious unless the prior art suggested the desirability of
the modification. In re Laskowski, 871 F.2d 115, 117, 10 USPQ2d 1397, 1398-99 (Fed. Cir.
1989); In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984).
We note that the examiner appears to have changed his position in his response to appellants’
arguments, i.e., that “the person of ordinary skill in the art at the time the invention was made would
have recognized the advantages of the p-nitrophenol substrates and would have substituted them for the
polysaccharides of Kasahara” (answer, page 8, para. 3 and page 13, top para.); that “[t]he real world
clinical chemist recognizes that nitrophenol substituted saccharides are functional equivalents of
saccharides for the determination of serum enzymes” (answer, page 11, para. 2); and, “there is ample
motivation in the prior art to replace unsubstituted saccharides with saccharides containing p-
nitrophenol is [sic, as] set forth in Farnham et al. in the section entitled ‘Background of the Invention’
5The claimed invention has been limited to recite G ~ OR sugar esters having only one or two glucose
3
units, i.e., glucoside or maltoside derivatives. According to the examiner, “[i]t is important to note that the invention
originally claimed included substrates with sufficient glucose units so that they would function as amylase” (answer,
page 6, fn 2). The examiner’s position began to fall apart when the claims were so narrowed.
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