Appeal No. 1996-3409
Application No. 08/092,543
taught by Seltzer et al. for the classification of neurological diseases by the Matson ‘87
method because one of skill in the art would have recognized that as taught by Seltzer et
al. the frequency distribution would have shown distinct classifiable differences
between biological markers of controls and individuals with the disease.” See page 8 of
the Answer.
Because fingerprint patterns and metabolic profiles are distinct properties or
features with no readily apparent connection, we infer that the only nexus between Matson
1987 and Seltzer is that both references are concerned with the classification of
neurological disorders. We cannot agree that this alone provides the requisite reason or
2
suggestion to combine the references in the manner proposed by the examiner. A bare
assertion that it would have been obvious to analyze any biological sample or parameter
using any statistical model previously used to identify the presence of a neurological
disorder is insufficient. Further, it is apparent from the specification that conventional
mathematical/statistical models are not interchangeable in the claimed method. See the
Specification, pages 17 through 19. The examiner has
2As stated in Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1573, 37 USPQ2d
1626, 1629 (Fed. Cir. 1996) (citation omitted), “It is well-established that before a conclusion of obviousness
may be made based on a combination of references, there must have been a reason, suggestion, or
motivation to lead an inventor to combine those references.”
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