Appeal No. 1996-2240
Application No. 08/105,482
the art to use a conventional method, such as the electrochemical analysis taught by
Applicant and Long et al., for the sample fluid analysis in the process taught by Mivagi [sic,
Miyagi] et al. so as to produce patterns which are representative of the electrochemical
constituents in a body fluid which Applicant admits are known to be associated with
various diseases” and “[i]t would have been obvious to one of ordinary skill in the art to
utilize a known process of analysis for detecting known constituents associated with a
particular disease if one wanted to diagnose that disease.” See page 13 of the Answer.
Appellant argues essentially that none of the prior art relied on teaches a
comparison with a frequency distribution data base (e.g., pages 37 and 39 of the Brief).
The examiner addresses this limitation for the first time in responding to appellant’s
arguments, asserting that “it would have been obvious to one of ordinary skill in the art to
apply conventional mathematical models, such as frequency distribution patterns . . . in
order to easily classify disorders since the frequency distribution shows distinct
classifiable differences between biological markers of controls and individuals with the
disease.” See pages 27 and 28 of the Answer.
Inasmuch as 35 U.S.C. § 103 requires that obviousness be determined based on
the claimed subject matter as a whole, we find that the examiner’s burden of
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