Appeal No. 1997-4138
Application No. 08/384,681
the importance of these factors in determining the concentration of the probe solution to be
used in this type of assay or some indication of how such factors would direct one of
ordinary skill in this art to vary the concentration of the probe solution. Thus, the examiner's
statements in support of the rejection of claims 27 - 31, 33 - 44, 46 - 52, 54, 55, 62, and 63
directed to the assay kit and the assay are not supported by those facts or evidence which
would have suggested or directed one or ordinary skill in this art to modify the teaching of
Fish alone, or when taken in combination with Gordon, Wada or Towbin, in the manner
required to arrive at the claimed invention. To the extent that the examiner relies on
Towbin as suggesting the use of a concentrated solution, we note that the examiner
acknowledges that (Supplemental Answer, page 4) "Appellant is correct in noting Towbin
is referring to providing a more concentrated immobilized antigen, to provide a more
concentrated reaction which would have been expected to generate a better contrast of the
color generated by the reaction against the background." Further, this teaching does not
suggest or direct one or ordinary skill in the art to use a more concentrated solution, and
particularly a specific concentration, of the probe solution in such an assay.
On these facts, we are constrained to find that the examiner has failed to establish
that it would have been obvious to those of ordinary skill in the art at the time of the
invention to provide a kit or assay which requires having a working reagent
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