Appeal No. 1998-1880
Application No. 08/423,865
collecting expired gas.” Notwithstanding this difference the examiner finds (Answer,
page 5) that:
It would have been obvious to one of ordinary skill in the art at
the time the invention was made to collect gas in the gastric cavity
because Hamilton teaches ammonia is produced in the gastric cavity
after ingestion of urea. One desiring to detect the presence of H.
pylori would then be taught the presence of ammonia in the gastric
cavity is indicative of the presence of H. pylori irrespective of how it is
collected.
The examiner reaffirms this position in his Supplemental Answer (page 2)
stating that “[i]t is the examiner’s position that collecting the same gas from any site
where that same gas is known to be found is rendered obvious by a known method
of collecting the same gas from any known site.
In response, appellants’ argue (Reply Brief, bridging paragraph, pages 1-2)
that the examiner “has not established that it would have been obvious to modify the
disclosure in Hamilton by collecting gas from the gastric cavity rather than collecting
expired gas.” We agree. While a person of ordinary skill in the art may possess the
requisite knowledge and ability to modify the protocol taught by Hamilton, the
modification is not obvious unless the prior art suggested the desirability of the
modification. In re Gordon, 733 F.2d 900, 902, 211 USPQ 1125, 1127 (Fed. Cir.
1984). Here we see no such reason to modify Hamilton to obtain the claimed
method which requires obtaining and measuring the amounts of ammonia and
organic amines in gastric cavity gas that has not traversed the circulatory system to
be expired in alveolar air. With regard to the examiner’s unsupported conclusion
(Supplemental Answer, page 2) that it would be obvious to collect gas from any site
where it is known to be found, we remind the examiner that, selective hindsight is no
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