Appeal No. 1999-0161
Application 08/441,567
In rejecting claims under 35 U.S.C. ' 103, the examiner bears the initial burden of
presenting a prima facie case of obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28
USPQ2d 1955, 1956 (Fed. Cir. 1993). 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 & Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626,
1629, (Fed. Cir. 1996) . Furthermore, the conclusion that the claimed subject matter is
prima facie obvious must be supported by evidence, as shown by some objective teaching
in the prior art or by knowledge generally available to one of ordinary skill in the art that
would have led that individual to combine the relevant teachings of the references to arrive
at the claimed invention. See In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598
(Fed. Cir. 1988). With this as background, we analyze the prior art applied by the
examiner in the rejection of the claims on appeal.
In the present case, the examiner relies on Janoff as evidence of lipid dependent
diagnostic assays including pre-incubation of a plasma sample with a phospholipid in
hexagonal organization. The preincubation step is shown to inhibit the activity of lupus
anticoagulants which in turn reduces the number of false positives in coagulation tests.
Answer, page 5. The examiner admits that the present claims differ from Janoff in that they
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