Appeal No. 2001-1650
Application No. 08/898,085
It would have been obvious to one of ordinary skill in the art
at the time the invention was made to use the vacuum means of
Clark in the device of Greenquist because Clark teaches that the
use of a vacuum to draw samples through a membrane provides
the advantage of rapidity over prior art procedures (Clark, column
1, lines 64-65).
While neither Greenquist nor Clark teaches a gas sample
being drawn through the carrier matrix, it would have been obvious
to one of ordinary skill in the art at the time the invention was made,
to use the device taught by Greenquist as modified by Clark to
detect analyte in a gaseous sample because the carrier matrix of
Greenquist is made of the same material as the carrier matrix of the
instant invention, therefore, they are functionally equivalent and
thus would be capable of detecting an analyte in both a gaseous
and liquid sample.
Discussion
In proceedings before the Patent and Trademark Office (PTO), the
examiner bears the burden of establishing a prima facie case of obviousness
based upon the prior art. In re Fritch, 972 F.2d 1260, 1265, 23 USPQ2d 1780,
1783 (Fed. Cir. 1992)(footnote omitted). The examiner can satisfy this burden
“only by showing some objective teaching in the prior art or that knowledge
generally available to one of ordinary skill in the art would lead that individual to
combine the relevant teachings of the references.” Id. 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. Y 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. Y
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