Appeal No. 1997-2389
Application No. 08/987,233
it would have been obvious for one of ordinary skill in the art to
insert [the] Mattiasson’s incubation period and metabolic
determination into Jolley’s immunodetermination method
(between the initial inoculation and addition of the biospecific
reagent) because Fernwood teaches cell growth in the
receptacle prior to filtration through and retention on the
membrane while Mattiasson teaches the specific metabolic
assay steps of the instant invention; further, one of skill in the
art would have known that the multiplication of organisms in the
sample would increase the amount of analyte for detection.
Moreover, it would have been obvious to subject the sample to
preliminary biochemical testing or screening (as taught by
Mattiasson) to identify samples warranting further
characterization by highly specific, costly immunoreagents
because Fernwood teaches that the same sample can be
contacted with a series of reagents by contacting the sample
with a reagent and drawing unreacted reagent through the
membrane while retaining the sample on the membrane for
further analysis.
The initial burden of presenting a prima facie case of obviousness rests on the
examiner. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
Only if that burden is met, does the burden of coming forward with evidence or argument
shift to the applicants. Id. In order to meet that burden the examiner must provide a
reason, based on the prior art, or knowledge generally available in the art as to why it
would have been obvious to one of ordinary skill in the art to arrive at the claimed invention.
Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 297, n.24, 227 USPQ
657, 667, n.24 (Fed. Cir. 1985,. cert. denied, 475 U.S. 1017 (1986).
On the record before us, we find that the facts and evidence provided by the
examiner falls short of that which would have reasonably suggested to one of ordinary skill
in this art at the time of the invention to modify the assay of Jolley in a manner to arrive at
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