Appeal No. 2001-0544 Page 9
Application No. 08/195,048
lines 36-42), and that the detergent can be added to, inter alia, wash solutions
(column 3, lines 61-65). However, Craig does not teach or suggest that
polyoxyethylene ether detergents and phenols have the same effect. Thus, the
suggestion provided by Craig—to add a polyoxyethylene ether detergent to
particular solutions—cannot be relied on to provide the required suggestion to
add a phenol derivative to the same solutions.
The examiner has provided no other evidence or scientific reasoning to
support combining the cited references. Since the record does not provide an
adequate reason, suggestion, or motivation to combine the references, the
rejection of claims 14, 15, 19, 20, and 25 under § 103 must be reversed.
The examiner also rejected claims 21 and 22 as obvious over Kricka,
Wehner, and Craig, combined with McClune ‘999. Claims 21 and 22 depend on
claim 14, and add the limitation that the labeling enzyme used in the claimed
immunoassay is alkaline phosphatase (claim 21) or β-galactosidase (claim 22).
The examiner cited McClune ‘999 as disclosing alkaline phosphatase and β-
galactosidase as enzymes that could be substituted for the peroxidase used by
Kricka and Wehner. Since the examiner cited McClune ‘999 only to meet the
limitations of the dependent claims, McClune ‘999 does not remedy the
deficiencies of Kricka, Wehner, and Craig, discussed above. The rejection of
claims 21 and 22 is reversed as well.
2. Written description
The examiner rejected claim 25 under 35 U.S.C. § 112, first paragraph, as
lacking an adequate written description in the specification. The examiner
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