Appeal No. 1998-1880
Application No. 08/423,865
more applicable to the design of experiments than it is to the combination of prior
art teachings. In re Dow Chem. Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531
(Fed. Cir. 1988).
With regard to the second step:
Appellants’ claimed invention requires that the amount of both ammonia and
organic amines in gastric gas are measured. According to appellants’ specification
(page 4) “[t]he gas collected from the gastric cavity is led to a sensor to measure
total amount of ammonia and organic amines, because of that the gas consists
primarily of ammonia, but organic amine gases shall possibly present therein, and
the sensor detects the amines in addition to ammonia.”
The examiner’s rejection is directly solely to the detection of ammonia. “The
test of obviousness vel non is statutory. It requires that one compare the claim’s
‘subject matter as a whole’ with the prior art ‘to which said subject matter pertains’”
[emphasis added]. In re Brouwer, 77 F.3d 422, 425, 37 USPQ2d 1663, 1666
(Fed. Cir. 1995). In this case, when comparing the claimed subject matter as a
whole with the cited prior art, the examiner failed to provide a teaching or reason
why one would detect organic amines in addition to ammonia in gastric gas, as
provided for in the claimed invention. As a result the examiner failed to address all
the limitations of the claimed invention. We remind the examiner, as set forth in In re
Antonie, 559 F.2d 618, 621, 195 USPQ 6, 8 (CCPA 1977), “[j]ust as we look to a
chemical and its properties when we examine the obviousness of a composition of
matter claim, it is this invention as a whole, and not some part of it, which must be
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