Appeal No. 1998-1720
Application No. 08/384,239
nothing more than compositions comprising uncomplexed, active enzymes with water
soluble salts, wherein the salts are used simply as diluents or fillers; no other function is
described for the salts.
Appellants argue that the references “would give no incentive to . . . combine them
to make a preparation in which a water soluble salt is present with a water insoluble inert
enzyme/tannin complex,” as “[t]he complex in such a preparation – and the preparation
itself - would be expected to be inactive until the enzyme were freed from the complex by
one of the . . . techniques discussed in [Geyer or Töpfer ] (e.g. with surfactants or
acetone).” Appellants further argue that the cited references, if anything, would lead one to
“expect such a combination to produce an aqueous solution of salt water containing the
insoluble and still inert complex.” Brief, pages 5 and 6. Be that as it may, we agree with
appellants that, at best, “[t]he references might suggest preparations in which a salt [is]
combined with an enzyme after liberation of the enzyme from a complex in which it is
bound, but that is not any of the inventions claimed.” Id., page 6.
In our judgment, the only reason or suggestion to modify the teachings of the
references in the manner proposed by the examiner comes from appellants’ specification.
Accordingly, on this record, we find that the examiner’s burden of establishing a prima
facie case of obviousness has not been met and the rejection of claims 2 and 9 as
unpatentable over Thomas, Geyer, Töpfer, Green, Borello and Tang is reversed.3
3Having determined that a prima facie case of obviousness has not been
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