Appeal No. 1996-1960
Application No. 07/975,167
wherein it is clearly set forth that such substrates avoid the problem of interference from the presence of
saccharides normally present in the clinical sample” (answer, page 12, para.4). Appellants argue that
although Kasahara has compounds which meet the formula “G” of claim 13, Kasahara does not
disclose the required p-nitrophenol group and it is impossible to modify Kasahara to add a
hydrophobic p-nitrophenol group because Kasahara requires a water-soluble substrate (brief, pages
8-10).
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the examiner to establish a
factual basis to support the legal conclusion of obviousness. In re Fine, 837 F.2d 1071, 1073, 5
USPQ2d 1596, 1598 (Fed. Cir. 1988). The examiner has not pointed out, and we do not find, where
Kasahara, McCroskey, Farnham, Rauscher and/or Blair discloses or suggests that p-nitrophenol-
glucosides/maltosides esterified at the 4- and/or 6-position of the non-reductive terminal glucose with a
fatty acid of 5 to 22 (Kasahara) or 30 (claimed invention) carbon atoms would have reasonably been
considered to be either water-soluble compounds or functional equivalents of Kasahara’s glyco-fatty
acid ester substrates. Although the examiner argues that any one of McCroskey, Farnham, Rauscher
or Blair shows that the substrates are water soluble (answer, para. bridging pages 11-12), none of
these four references disclose p-nitrophenyl substituted substrates esterified with a fatty acid of 5 to
22 or 30 carbon atoms. The examiner also relies on “the textbook teachings of Morrison et al. ...
[wherefrom a] simple calculation indicates that approximately 0.12 moles of p-nitrophenol is [sic]
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