Appeal No. 1997-2087
Application No. 08/203,837
remove cysts (Abstract). This combination is reported to kill cysts of Acanthamoeba
castellani more effectively.
The examiner states that it would have been obvious to combine these references
and arrive at appellant's invention because
the practitioner would be aware that the lysozyme 1) would
potentiate the activity of the hydrogen peroxide in destroying
Acanthamoeba cysts per the disclosure of Izumi et al. and 2)
when lysozyme was included in the composition, [sic, it] would
need to be separated from the cleaning enzyme component
until after it has had its disinfecting effect because the cleaning
enzyme component would inactivate the lysozyme (Examiner's
Answer, paragraph bridging pages 6 and 7).
Upon consideration of the entire record before us, we cannot sustain the examiner's
rejection.
DISCUSSION
Patentability of a claim under 35 U.S.C. § 103 must be premised upon considering
the subject matter of a claim "as a whole." As recently stated in Pro-Mold
& Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1629
(Fed. Cir. 1996) (citation omitted): "It is well-established that before a conclusion of
obviousness may be made based on a combination of references, there must have been a
reason, suggestion, or motivation to lead an inventor to combine those references."
The nature of the problem which persisted in the art, and the inventor's solution, are
factors to be considered in determining whether the invention would have been obvious to
a person of ordinary skill in that art. Fromson v. Advance Offset Plate, Inc., 755 F.2d 1549,
7
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007