Appeal No. 1998-1987
Application No. 07/915,783
“[W]hen the PTO shows sound basis for believing that the products of the
applicant and the prior art are the same, the applicant has the burden of showing
that they are not.” In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1658
(Fed. Cir. 1990). Appellant has not shown that the prior art compositions fail to
meet any of the limitations of claim 68. We therefore affirm the rejections under
35 U.S.C. § 102 based on Kilejian and Epstein. Since we find that Kilejian and
Epstein anticipate claim 68, we do not reach the alternative basis under 35
U.S.C. § 103. We also find it unnecessary to consider the disclosures of
Schmidt-Ullrich, Howard, and Newbold, which were relied on as alternatives to
Kilejian or Epstein.
5. The § 103 rejection.
The examiner rejected claims 84-88 and 90-100 as obvious in view of the
disclosure of either Kilejian or Schmidt-Ullrich. The examiner reasons that the
references teach processes of obtaining plasmodial parasite antigens using non-
ionic detergent, and that the process steps recited in the claims “appear to be
conventional extraction steps and known to persons of skill in the art at the time
the invention was made.” Examiner’s Answer, pages 14-15. Therefore, the
examiner concludes that the claimed process would have been obvious in view
of the references.
“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
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