Appeal No. 1999-1155
Application No. 08/241,253
suggestion or teaching of the desirability of making the specific
combination that was made by the applicant. [citations omitted]
The examiner has established that certain of the elements of the claimed
invention can be found in the prior art. Nevertheless, what is lacking from the
examiner’s treatment of the claims on appeal is a reason, suggestion or motivation,
stemming from the prior art, which would have led a person having ordinary skill to the
claimed method. Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568,
1573, 37 USPQ2d 1626, 1629 (Fed. Cir. 1996). In our judgment, the only reason or
suggestion to modify the references to arrive at the present invention comes from
appellants’ specification.
Claims directed to multimeric chelating compounds wherein the chelating moiety
can be “any moiety capable of chelating a metal atom,” e.g., claim 5, are another matter
entirely. Our determination of the patentability of these claims is hampered by the
examiner’s complete failure to acknowledge or address this embodiment of the
invention in the statement of the rejection. 35 U.S.C. § 103 requires that obviousness
be determined based on the claimed subject matter as a whole. Where, as here, the
determination of obviousness is based on less than the entire claimed subject matter,
the examiner’s conclusion of obviousness is legally unsound and cannot stand.
On the record before us, we are constrained to reverse the examiner’s rejection
of claims 1 through 12, 18 and 19 under 35 U.S.C. § 103.4
4 Because we reverse on the basis of failure to establish a prima facie case of
(continued...)
7
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007