Appeal No. 1998-3386
Application No. 08/265,698
prior art to produce the claimed invention where there is some teaching, suggestion,
or motivation to do so found either in the references themselves or in the knowledge
generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071,
1075, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). On this record we find no
suggestion to modify Lackner, to apply pressure to said reaction mixture, as would
be necessary to arrive at the claimed invention.
The examiner suggests (Answer, page 5) that “pressure” is a result effective
variable and therefore “optimization of result effective processes [sic] parameters is
well within the skill of those in the art.” However, this determination requires that
“pressure” be recognized as a result effective variable in this system. In re Antonie,
559 F.2d 618, 620, 195 USPQ 6, 9 (CCPA 1977). Applying pressure is not
suggested by the teachings of Lackner. Lackner made no attempt to apply
pressure, but instead, as discussed supra, recognized that “[d]ue to diffusion
limitation, a slower degradation rate than without dialysis tubing was observed.”
Lackner does not reveal the concept of applying pressure that appellant discovered,
and the examiner has provided us with no other basis to find the claimed invention
obviousness.
Therefore, on this record we are compelled to find that the examiner failed to
meet his burden of establishing a prima facie case of obviousness. 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).
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