Appeal No. 1999-0413
Application No. 08/294,819
1127 (Fed. Cir. 1984). We remind the examiner that selective hindsight is no 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). On this record, absent appellants’ disclosure, the examiner provides no
suggestion supported by the prior art to modify the references as applied. We are
not persuaded by the examiner’s unsupported “position” (Answer, page 5) that
“[w]ithin the context of a range that extends over 49,900 units, it is the examiner’s
position that a variance of 50-75 units, or 1-1.5%, is encompassed by ‘about’.” This
is particularly true in view of appellants’ argument that Manthy teach away from the
claimed invention.
Appellants’ argue (Brief, bridging paragraph, pages 11-12) that:
Mantyh et al. teaches away from using amounts less than 100
µM. Knowing that amounts less than 100 µM will result in
minimal or nonexistent amounts of Aß aggregation, persons or
ordinary skill in the art trying to obtain Aß aggregation would
have avoided amounts less than 100 µM. Instead, they would
have focused on larger quantities towards the upper end of the
100 µM-50 mM range demonstrated by Maggio et al. to yield
significant amounts of Aß aggregation, to insure Aß
aggregation, hence, assay sensitivity.
In response, the examiner finds (Answer, page 5) that “even if the
combination were construed as teaching away from using a lower concentration of
metal ions for iodine labeled peptide, it would have been obvious to use metal ions
at a concentration of about 100 µM metal ions, encompassing 50 µM and 25 µM,
with the alternative labeled peptides taught by Maggio, which metal ion
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