Appeal No. 1996-3318
Application No. 08/287,056
may itself contain glucose substrate, (ii) that additional glucose substrate may be added to
the liquid and (iii) that auxiliary enzymes may be added to the liquid to release glucose
from a precursor substance therein, i.e., a "source of glucose" (see e.g., Alfa-Laval, pages
2-3; Baker, col. 4, line 75 - col. 5, line 18), and on the other hand to argue that those skilled
in the art would have found the data presented in the specification unpredictable. In other
words, it appears that those skilled in the art would have reasonably expected a glucose
oxidase catalyzed biocide to be more effective and/or longer lasting in a system which
added glucose substrate to a liquid, than in a system which relied solely on any
endogenous glucose in the liquid to provide the needed glucose substrate. Therefore, the
rejection under 35 U.S.C. § 112, first paragraph, is reversed.
2. Rejection of claims 1-8 under 35 U.S.C. § 103 over Orndorff, Alfa-Laval, Hitzman
and Baker
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. 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).
- 5 -
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007