Appeal No. 2000-2269 Page 6
Application No. 08/862,337
972 F.2d 1260, 1265, 23 USPQ2d 1780, 1783 (Fed. Cir. 1992). “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. 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.” Id. at 1266, 23 USPQ2d
at 1783 (citations omitted).
We agree with Appellants that the examiner has not carried his burden of
showing that the claims are prima facie obvious over the prior art. We note
initially that the basis of the examiner’s rejection is somewhat difficult to discern,
because he did not address the particular limitations of any specific claim. For
example, the examiner noted that Gold differs from the claimed invention in that
Gold does not explicitly teach the collection of antibodies from
individuals, with whatever malady, for use in the assay. Gold also
does not explicitly teach specific Kd values, all possible specific
buffer conditions, or selection of nucleic acids which can compete
for binding with an antigen at an antibody target site.
Examiner’s Answer, pages 4-5. None of these limitations, however, appears in
independent claims 1 or 26.
With respect to claims 1 and 26, the examiner has not identified any
specific difference between what is claimed and what is disclosed in the prior art,
nor has he provided any reasoning as to why the difference(s) would have been
obvious to those skilled in the art. Thus, on this record, we cannot say that the
examiner has carried his burden of showing that a person skilled in the art would
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