Appeal No. 2001-1392 Page 5
Application No. 08/900,586
In response appellants argue (Brief2, page 6) “[w]hile the [e]xaminer has
correctly characterized the teachings of the cited references, it is not believed that
these teachings fairly establish a case for prima facie obviousness for the present
invention.” We agree. As appellants explain (Brief, page 8) it is not “the concept of
ratioing the concentration of one analyte to another [that] is patentable or even
novel,” instead it is appellants’ invention taken as a whole that is novel and
unobvious in view of the prior art relied upon. According to appellants (id.) [t]he
teachings by Baker et al[. and Besch] of a basic ratioing technique is not suggestive
of the claimed invention … [and the Yip] “method for measuring analyte to creatinine
ratios … is completely different from that of the present claims.”
In response to appellants’ arguments the examiner simply restates his
original conclusion (Answer, page 7) “the claimed invention appears to be an
obvious variation of the reference teachings of determining the concentration of two
analytes in fluids then normalizing the first analyte using the concentration of the
second analyte.” We remind the examiner, as set forth in In re Kotzab,
217 F.3d 1365, 1369-70, 55 USPQ2d 1313, 1316 (Fed. Cir. 2000):
A critical step in analyzing the patentability of claims pursuant to
section 103(a) is casting the mind back to the time of invention, to
consider the thinking of one of ordinary skill in the art, guided only by
the prior art references and the then-accepted wisdom in the field. …
Close adherence to this methodology is especially important in cases
where the very ease with which the invention can be understood may
prompt one “to fall victim to the insidious effect of a hindsight
syndrome wherein that which only the invention taught is used against
its teacher.”
…
2 Paper No. 11, received May 7, 1999.
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007