Appeal No. 1998-3386
Application No. 08/265,698
claims. However, the examiner considers appellants’ reference to “applying a
pressure” (Answer, page 5) “to be no more than the standard optimization of a result
effective variable, i.e., the pressure differential across the membrane that will force
the intermediate into the waste stream side.” The examiner concludes (Answer,
page 10) that for “[a]ppellants to consider that a pressure gradient increase (over
and above that due to the osmotic pressure) across the prior art membrane
provides for a patentable distinction, discounts the most basic knowledge of those
in the art.”
In response, appellants argue (Brief, page 16) that:
Lackner et al only utilize diffusion and do not provide a pressure
gradient:
Due to diffusion limitations, a slower degradation rate
than without dialysis tubing was observed (Lackner et
al, p. 1096).
…
Rather than teach the use of pressure as claimed in the present
invention, Lackner et al suggest removal of the membrane barrier.
This statement leads one skilled in the art to a path divergent from the
path taken by the [a]ppellants, and as such, teaches away.
In contrast to appellants’ position that Lackner teaches away, the examiner argues
that removing the dialysis tubing “would defeat the whole purpose of Lackner et al
teaching, i.e., keep the waste separate from the peroxidase.”
We remind the examiner that in determining whether the claimed invention is
obvious, a prior art reference must be read as a whole and consideration must be
given where the reference teaches away from the claimed invention. Akzo N.V.,
3 Paper No. 29, received May, 14, 1998.
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