Appeal No. 1997-2387
Application No. 08/082,373
According to the examiner, it would have been obvious to use the ferromagnetic
particles of JP '161 as the particle reagent of Bernoco and the magnetic separation of JP
'161 in place of the centrifugal separation of Bernoco because the ferromagnetic particles
of JP '161 are physically and chemically uniform and stable, economically mass produced
and specifically suggested as suitable carriers for agglutination reactions whereby
agglutination reaction time can be shortened by about half and because the process of
Bernoco not only encompasses both simple and complex agglutination reactions but also
makes possible reliable automated measurements using very small amounts of reagents
and specimen. Noting that the process of Bernoco determines agglutination by the
amount of slippage observed after sedimentation, the examiner concludes that one of
ordinary skill in the art "would have been capable of providing the [necessary] inclination
means ... subsequent to separation." [Answer, p. 5, para. 2.]
Here, we agree with appellants that the examiner has not established a prima facie
case of obviousness because the fact that the prior art reference could be so modified to
show the patented invention would not have made the modification obvious unless the prior
art suggested the desirability of the modification. In re Gordon, 733 F.2d 900, 902, 221
USPQ 1125, 1127 (Fed. Cir. 1984). First, the examiner has not explained what would
have motivated one of ordinary skill in the art to modify the process and apparatus of
Bernoco, directed to providing coaxially directed centrifugal force to agglutination
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