Appeal No. 2001-1587
Application No. 08/506,268
The examiner concluded that
[i]t would have been obvious at the time the invention was made to
a person having ordinary skill in the art to use a swab taught by
Geigel [sic], utilizing fleece taught by Baier et al[.], to collect a
sample from a surface, then to apply the sample to the application
zone of the device taught by Fitzpatrick et al[.] either by swapping
[sic] the application zone with the fleece swab device, or holding
the swab device in contact with the application zone. Eluate would
then be applied to the application zone to initiate capillary action to
move the analyte through the assay device. By combining these
aspects of each of the prior art [references], one would have a
commercially viable device and technique in a convenient kit which
could be used under a variety of field conditions for the detection of
harmful and/or illegal substances.
Id., pages 4-5.
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial
burden of presenting a prima facie case of obviousness. Only if that burden is
met, does the burden of coming forward with evidence or argument shift to the
applicant.” In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir.
1993). “Measuring a claimed invention against the standard established by
section 103 requires the oft-difficult but critical step of 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.” In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir.
1999).
In this case, the references relied on by the examiner do not support a
prima facie case of obviousness. The examiner’s characterization of Fitzpatrick
overstates its relevance. In the claimed assay, a wiping surface is applied to,
and maintained in contact with, a test strip and analyte is eluted from the sample
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