Appeal No. 1999-1384
Application No. 08/583,912
However, while both appellants and Kidwell recognize the result effective
variables, the object of appellants’ invention (appellants’ specification, bridging
paragraph, pages 3-4) is “to perform bioassays capable of detecting minute
quantities of an analyte in under one minute.” In contrast, Kidwell prefers
(column 6, lines 26-28) an interaction time “between about one to about five
minutes, with two minutes being most preferred.” Kidwell further discloses
(column 6, lines 32-33) that the longer the interaction time, the greater the
sensitivity.
The examiner is reminded that “[t]he consistent criterion for determination
of obviousness is whether the prior art would have suggested to one of ordinary
skill in the art that this process should be carried out and would have a
reasonable likelihood of success, viewed in the light of the prior art.” In re Dow
Chemical Co. 837 F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed. Cir. 1988). On
this record, the examiner has not provided, and we do not find, a suggestion in
the prior art, that the interaction times of one to about five minutes, as disclosed
by Kidwell, could be reduced, with a reasonable likelihood of success, to “about
0.1 sec through about 30 sec” as required by the claimed invention. Instead, we
agree with appellants that Kidwell teaches away from analyte-membrane
interaction times of about 0.1 through about 30 seconds. On this record, there is
no suggestion to reduce the analyte-membrane interaction time below one
minute as taught by Kidwell. Therefore, in our opinion, in contrast to the facts of
Boesch, the prior art relied on by the examiner would not have suggested the
kind of experimentation necessary to obtain appellants’ claimed invention.
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