Appeal No. 1997-3503
Application No. 08/172,866
present invention cannot be expected from the cited references. Where a
gravitational force is utilized as in Sakuma, it is not possible to obtain an [sic]
desirable sensitivity as in the present invention.”
The examiner argues (Answer, page 12) that “[o]ne of ordinary skill in the
art would have known that when a magnet is used to replace the force of gravity,
it should be placed at the bottom of the reaction vessel…” and one would
“certainly have expected that use of a magnet for precipitation in place of gravity
would have shortened the precipitation time considerably. The clearly
distinguishable positive or negative pattern would have naturally resulted from
the use of the magnet.” We remind appellant, as set forth in In re Freeman, 474
F.2d 1318, 1324, 177 USPQ 139, 143 (CCPA 1973):
In order for a showing of “unexpected results” to be probative
evidence of non-obviousness, it falls upon the applicant to at least
establish: (1) that there actually is a difference between the results
obtained through the claimed invention and those of the prior art,
and (2) that the difference actually obtained would not have been
expected by one skilled in the art at the time of the invention.
Here appellants have not established that the difference actually obtained by the
use of a magnet as set forth in the examiner’s rejection would not have been
expected by one skilled in the art at the time of the invention. As explained by
the examiner (Supplemental Answer, page 2), “none of the references used for
rejection of the claims suggests the use of centrifugation for rapid precipitation.”
Accordingly, we are not persuaded by appellants’ arguments and evidence of
unexpected results.
11 Executed, October 26, 1993.
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