Appeal No. 1996-3318
Application No. 08/287,056
and disclose adding catalase to remove the hydrogen peroxide as it is produced (In
Hitzman see col. 3, lines 14-18, 57-60; col. 4, lines 16-20; and EXAMPLE II, cols.
14-15. In Baker see col. 3, lines 3-30). Indeed, Example 3 in Baker describes adding
lactase, glucose oxidase and catalase to milk, wherein the lactase converts the lactose in
the milk to glucose, the glucose oxidase oxidizes the glucose and the catalase removes
the hydrogen peroxide by-product as it is produced (paragraph bridging cols. 4-5).
The only place we find the suggestion to combat microorganisms in industrial
processes by adding glucose oxidase and optionally glucose or a source of glucose to
industrial process waters or slurries is in the appellant’s specification. Thus, we find that
the examiner has relied on impermissible hindsight in making her determination of
obviousness. In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1784 (Fed. Cir. 1992)
(“It is impermissible to engage in hindsight reconstruction of the claimed invention, using
the applicant’s structure as a template and selecting elements from references to fill the
gaps.”). Therefore, we conclude that the examiner has not established a prima facie case
of obviousness as to claims 1-8 over Orndorff, Alfa-Laval, Hitzman and Baker.
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