Appeal No. 1999-1307
Application No. 08/442,035
coming forward with evidence or argument shift to the applicants. Id. In order to meet that
burden the examiner must provide a reason, based on the prior art, or knowledge
generally available in the art as to why it would have been obvious to one of ordinary skill in
the art to arrive at the claimed invention. Ashland Oil, Inc. v. Delta Resins & Refractories,
Inc., 776 F.2d 281, 297, n.24, 227 USPQ 657, 667, n.24 (Fed. Cir.), cert. denied, 475 U.S.
1017 (1986).
On the record before us, the examiner has not met the initial burden of establishing
why the prior art, relied on, would have led one of ordinary skill in this art to arrive at the test
strip presently claimed. Blatt discloses a test strip, lacking a window in the cover sheet,
which makes use of capillary channels to direct the fluid sample into the chamber where
the detection reagent is located rather than a porous absorbent layer as presently claimed.
The examiner has provided no facts or evidence which would reasonably be read to
modify Blatt in a manner to arrive at the claimed test strip. The examiner has failed to
account for the claimed elements as a whole in a manner which would reasonably support
a conclusion that the claimed subject matter would have been obvious within the meaning
of 35 U.S.C. § 103. In the absence of such evidence, the only suggestion to assemble a
test strip of the type presently claims is provided by appellants’ disclosure of the invention.
However, use of this information as a basis for establishing a prima facie case of
obviousness, within the meaning of 35 U.S.C. § 103, would constitute impermissible
hindsight.
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