Appeal No. 1999-0123
Application No. 08/406,239
Each of the examiner’s rejections under 35 U.S.C. § 103 requires the
combination of Zherdev and Herrmann. The examiner relies on Zherdev to teach
(Answer, page 4):
[I]n the translation provided, on page 2 a method of analysis by
introducing tagged enzymes, such as horseradish peroxidase, of
protease substrates for developing determination of proteolytic
activity. Bovine serum albumin is the conjugate. On page 3
paragraph 2, alkaline protease is shown. On page 4 paragraph 2,
absorbance is measured. Polystyrene is used as a solid support on
page 4 paragraph 3. On page 12 paragraph 2, trypsin is shown.
The examiner finds (Answer, page 5) that “[c]laim 1 differs from Zherdev in
that it specifies an indicator is present which is susceptible to a detectable change
upon action of the reporter enzyme.” To make up for this deficiency the examiner
relies on Herrmann (Answer, page 5) for the disclosure that “detection of
substances with hydrolase activity with uncolored substrates are converted into
colored products … the reaction is carried out on a fleece or film [and, inter alia,] the
reaction is performed on a carrier which may be cellulose, synthetic resins or
mixtures.”
With regard to the limitation in claim 1(a) that the enzyme is immobilized, the
examiner argues (Answer, page 6) that “immobilization of enzymes is a well known
technique used in many biological and chemical arts and would produce an
expected result … [i]mmobilized indicators in test strips are nearly universal in the
test strip art and no unexpected results are seen.”
However, as set forth in Ecolochem Inc. v. Southern California Edison, 227
F.3d 1361, 1375, 56 USPQ2d 1065, 1075 (CAFC 2000):
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