Page 7
As to Doebbler, there is no indication that inhibiting effects observed on five
specific enzymes studied, would apply to pectinase enzyme activity as required by the
claimed subject matter, particularly as the enzymes disclosed in Doebbler do not
include the claimed enzyme. Furthermore, the inert gases disclosed by Doebbler are
not limited to the claimed noble gases argon, neon, krypton and xenon, but include N O
2
and SF . Based on the disclosure of Doebbler, there is no reason to select either
6
the requisite enzyme or gas.
Accordingly, the examiner has not established a prima facie case of obviousness
and the examiner's rejection of claims 89 through 104 and 106 through 112 as
unpatentable over Fath, and Powrie in view of Bagdigian, Doebbler and Seebeck are not
sustained.
The examiner must show reasons that the skilled artisan confronted with the same
problems as the inventor and with no knowledge of the claimed invention, would select
the elements from the cited prior art references for combination in the manner
claimed. We determine on the record before us that there is no reason, suggestion,
or motivation to combine the references in the manner proposed by the examiner.
Accordingly, the examiner has not established a prima facie case of obviousness. In
re Rouffet, 149 F.3d 1350, 1357, 47 USPQ2d 1453, 1458 (Fed. Cir. 1998).
Since no prima facie case of obviousness has been established, we need not
address the experimental results relied upon by appellants. See Brief, page 8. In
re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984); In re
Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976).
DECISION
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