Appeal No. 2001-1392 Page 6
Application No. 08/900,586
Most if not all inventions arise from a combination of old
elements. … Thus, every element of a claimed invention may often be
found in the prior art. … However, identification in the prior art of each
individual part claimed is insufficient to defeat patentability of the
whole claimed invention. … Rather, to establish obviousness based
on a combination of the elements disclosed in the prior art, there must
be some motivation, suggestion or teaching of the desirability of
making the specific combination that was made by the applicant.
[Citations omitted].
On reflection, the examiner has at best established that individual parts of the
claimed invention were known in the prior art. What is missing, however, is
evidence that a skilled artisan, with no knowledge of the claimed invention, would
select the elements from the cited prior art references for combination in the manner
claimed. “[A] rejection cannot be predicated on the mere identification … of
individual components of claimed limitations. Rather particular findings must be
made as to the reason the skilled artisan, with no knowledge of the claimed
invention, would have selected these components for combination in the manner
claimed.” Ecolochem Inc. v. Southern California Edison, 227 F.3d 1361, 1375, 56
USPQ2d 1065, 1075-76 (Fed. Cir. 2000).
Thus we find the examiner has failed to provide sufficient evidence to support
a prima facie case of obviousness of a method of determining the concentration of
an analyte in a sample that uses the ratio of control analytes to normalize the
concentration of a specific target analyte. We also find that the examiner fails to
provide appropriate evidence that a test matrix having the attendant structure
required by step a) of claim 1, would have been prima facie obvious to a person of
ordinary skill in the art at the time the invention was made. We note that the
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