Appeal No. 1999-0959
Application No. 08/415,166
section 103, teachings of references can be combined only if there is some suggestion
or incentive to do so.’ Although couched in terms of combining teachings found in the
prior art, the same inquiry must be carried out in the context of a purported obvious
‘modification’ of the prior art.” Id. at 1266, 23 USPQ2d at 1783 (citations omitted,
emphasis in original).
The examiner asserts that those skilled in the art would have found it
obvious in view of the Schwinn patents to practice the claimed method employing
calcium ions at 1 -30 mM and a chelating agent at 1-7 mM. However, the prior art
teaches use of these reagents at concentrations significantly higher than those
recited in the claims, i.e., calcium at 50-2000 mM and chelating agent at 10-300
mM. The examiner points to nothing in the references that would have led a
person of ordinary skill in the art to modify the disclosed methods by using
calcium and chelating agent at the concentrations recited in the claims. Nor does
the examiner provide other evidence or reasoning that would have led those
skilled in the art to modify the method disclosed by the Schwinn patents by
reducing the concentrations of calcium and chelating agent.
“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 at 1266, 23
USPQ2d at 1783. Since the relied-on references do not provide motivation to
modify a known process as required by the claims, they do not support a prima
facie case of obviousness. The rejection is reversed.
8
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007