Appeal No. 1998-1987
Application No. 07/915,783
1626, 1629 (Fed. Cir. 1996). “Even when obviousness is based on a single prior
art reference, there must be a showing of a suggestion or motivation to modify
the teachings of that reference.” In re Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d
1313, 1316-17 (Fed. Cir. 2000). “The mere fact that the prior art may be
modified in the manner suggested by the Examiner does not make the
modification obvious unless the prior art suggested the desirability of the
modification.” In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783 (Fed.
Cir. 1992)
The process of claim 84 requires, inter alia, “forming a suspension in an
aqueous medium of” plasmodium-containing material, and “adding a non-ionic
detergent into the suspension to disperse the antigenic, insoluble factor(s).”
Thus, the claim requires first forming a suspension containing plasmodial
antigens, then adding a non-ionic detergent to that suspension. Neither Kilejian
nor Schmidt-Ullrich disclose such a two-step process; in both prior art references,
a pre-mixed solution containing non-ionic detergent is used to extract and
solubilize the plasmodial antigens. The examiner has pointed to nothing in the
prior art that would have motivated those skilled in the art to modify the prior art
process as required to meet the limitations of the claims. Since the cited
references would not have motivated those skilled in the art to carry out the
claimed process, the references do not support a prima facie case of
obviousness. The rejection under 35 U.S.C. § 103 is reversed.
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