Appeal No. 1997-3898
Application No. 08/116,382
3
explicit suggestion to remove interference from toxins on the disclosed mutagencity test.
Finally, the examiner has not pointed out, and we do not find, where Bostick provides the
requisite motivation to combine the disclosures of the prior art as suggested. Rather, the
examiner simply relies on Bostick to show that chromatographic separation and
luminescent detection of components of a mixture is known (Answer, p. 9, ll. 1-3).
Thus, we find the examiner has not carried his burden of establishing a prima facie
case of obviousness and has relied on impermissible hindsight in making his
determination of obviousness. In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1784
(Fed. Cir. 1992) (“It is impermissible to engage in hindsight reconstruction of the claimed
invention, using the applicant’s structure as a template and selecting elements from
references to fill the gaps.). Having concluded that the examiner has not established a
prima facie case of obviousness, we do not reach the Weisemann Declaration discussed
in appellants’ request for reconsideration.
Accordingly, based on this record, the rejection of claims 8 through 17 under 35
U.S.C. § 103(a) over Jordon or Drucker in view of Bjorseth and Bostick is reversed.
3See e.g., Bjorseth at p. 89, i.e., "Toxic compounds may then be separated from the mutagenic
compounds and thereby not interfere with the mutagenicity test" (c. 1, ll. 3-6 from the bottom) and
"Because the compounds are separated, effects arising from toxic substances in the sample may, in
principle, be avoided" (sentence bridging ccs. 2-3).
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