Appeal No. 2001-0059 Page 4
Application No. 08/530,370
modified, however, would not have made the modification obvious unless the prior art
suggested the desirability of the modification. In re Gordon, 733 F.2d 900, 902, 221
USPQ 1125, 1127 (Fed. Cir. 1984). Here, we find no reason stemming from the prior
art relied on by the examiner which would have led a person having ordinary skill in the
art to the claimed invention. Miyazaki is cited in the rejection of dependent claim 11 for
its description of a fluorescence-based immunoassay, but does nothing to cure the
underlying deficiencies of Cornell II=s teachings. In our judgment, the only reason or
suggestion to modify Cornell II in the manner proposed by the examiner comes from
appellants= specification.
Finally, we know of no basis for the examiner=s requirement that appellants
establish that Athe only intent of the inventors of [Cornell II] was to alter the overall
amount of antibody and not the individual antibody amounts.@ Answer, page 10.
On this record, we are constrained to reverse both of the examiner=s rejections of
the claims under 35 U.S.C. ' 103.
Double Patenting
Claims 1-7 and 9 stand rejected under the doctrine of obviousness-type double
patenting as unpatentable over claims 1-25 of Cornell I (U.S. Patent No. 5,443,955).
The patented claims are directed to analytical membranes that meet all of the
limitations of claim 1 on appeal except for the specified ratio. Again, the examiner
concluded that one skilled in the art would have been Amotivat[ed] to optimize the ratio
of first receptor molecules to second receptor molecules@ in the manner required by the
claims on appeal because Cornell I teaches (at column 9, lines 1-3) that Athe density of
receptor molecules in the membrane can be controlled and hence optimized for the
most sensitive detection of the desired analyte.@ Answer, page 4.
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