Appeal No. 1997-2389
Application No. 08/987,233
culturing for a metabolic by-product which would indicate the presumptive presence of the
specific microbe to be determined. While Mattiasson might be read to suggest the use of
a qualitative step prior to the quantitative analysis, Mattiasson does not suggest the use of
the detection of the metabolic products from the culturing step as a qualitative step in an
assay. Since Mattiasson has already established by binding of the microbes to the
membrane, the presumptive presence of the microbe of interest, there is no need for
Mattiasson to select those specific metabolites which would indicate the presence of the
specific microbe to be determined. (Compare Mattiasson, column 3, line 60 - column 4,
line 68).
Fernwood does not provide that which is missing from the disclosures of Jolley and
Mattiasson. While Fernwood provides an apparatus which includes a receptacle which
includes a membrane, wherein more than one biochemical process could be preformed,
there is nothing which would have suggested that one should modify the methodology of
Jolley, even with the teaching of Mattiasson, in a manner to arrive at the claimed invention.
With regard to the presently claimed method of analyzing a liquid sample to
quantitatively determine the presence of a specific microbe, the examiner has not met the
initial burden of establishing why the prior art, relied on, would have led one of ordinary skill
in this art to arrive at the claimed assay. Where the examiner fails to establish a prima
facie case, the rejection is improper and will be overturned. In re Fine, 837 F.2d 1071,
1074, 5 USPQ2d 1596, 1598 (Fed. Cir.1988). Therefore, the rejection of claims 27, 28,
31 - 35, 43, and 47 under 35 U.S.C. § 103 over the combination of Jolley, Fernwood, and
Mattiasson is reversed.
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