Appeal No. 1997-3600
Application No. 08/300,447
Claims 25-28 stand rejected under 35 U.S.C. § 103 as being unpatentable
over Wun in view of Zeffren as applied to claims 22-24, 29-35, 41 and 423 and
further in view of Chmielewska.
We reverse.
DISCUSSION
The initial burden of presenting a prima facie case of obviousness rests on
the examiner. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed.
Cir. 1992). In meeting this initial burden, 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. Pro-Mold and Tool Co. v. Great Lakes Plastics Inc., 75
F.3d 1568, 1573, 37 USPQ2d 1626, 1629 (Fed. Cir. 1996).
According to the examiner (Answer4, page 5) Wun teach “[o]n page 3649
Fig. 12 depicts plots of tPA with inhibitor where the activity of tPA is measured as
function of time and is plotted as a first order reaction.” The examiner finds
(Answer, page 5) that Wun differs from the claimed invention, in that the claims
“include a determination of half-life and calculate activity based on a second order
rate constant.” To make up for this deficiency, the examiner applies Zeffren
(Answer, page 5) to teach “second order rate reactions depend upon the
2 We note appellants’ statement (Paper No. 17, received August 15, 1996) that as a
result of the amendments “[c]laim 21 [is] … now [c]laim 41…” (page 6) and “[c]laim
36 has been cancelled and replaced with [c]laim 44 [sic, 42]…” (page 7).
3 Id.
3
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