Appeal No. 1997-2373
Application No. 08/333,880
The examiner also rejected claims 29-32 as obvious over Mowery and
Afeyan. Claims 29-32 require that part of the sample volume be passed directly
through a detector means and that another part of the sample be passed through
a chromatography column and the detector means. The examiner argues that
the language of the claims “reads on the device of Mowery wherein when the
multiport valve is switched[,] a sample is forced out to the detector and a second
sample which was held in the sample loop goes to the chromatography column
and subsequently to the detector.” Examiner’s Answer, page 14.
“In proceedings before the Patent and Trademark Office, the Examiner
bears the burden of establishing a prima facie case of obviousness based upon
the prior art.” In re Fritch, 972 F.2d 1260, 1265, 23 USPQ2d 1780, 1783 (Fed.
Cir. 1992). “‘Obviousness cannot be established b y combining the teachings of
the prior art to produce the claimed invention, absent some teaching or
suggestion supporting the combination. Under section 103, teachings of
references can be combined only if there is some suggestion or incentive to do
so.’ Although couched in terms of combining teachings found in the prior art, the
same inquiry must be carried out in the context of a purported obvious
‘modification’ of the prior art. The mere fact that the prior art may be modified in
the manner suggested b y the Examiner does not make the modification obvious
unless the prior art suggested the desirability of the modification.” Id. at 1266,
23 USPQ2d at 1783 (citations omitted, emphasis in original).
Here, the examiner has acknowledged that both the Cazer apparatus and
the Mowery apparatus must be modified in order to meet the limitations of the
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