Appeal No. 2001-1654 Page 7
Application No. 08/445,584
reference to claim 16, the examiner also cited Schmitz as teaching an
immunoassay using “an enzyme-labelled antigen.” Examiner’s Answer, page 5.
The examiner concluded that it would have been obvious to add the
anti-IgG taught by Unger to the assay method disclosed by Duermeyer, in order
to prevent RF-induced false positives. The examiner also concluded that “[i]t
would have been obvious to one of ordinary skill in the art at the time the
invention was made to optimize the assay by simultaneously adding all
necessary reagents because such optimization procedure involves a single
incubation step and eliminates washing steps which serve to shorten the length
of time required for an assay,” Examiner’s Answer, page 6, and that it would
have been obvious to use a labeled antigen for detection, as disclosed by
Schmitz.
“In proceedings before the Patent and Trademark Office, the Examiner
bears the burden of establishing a prima facie case of obviousness based upon
the prior art. ‘[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.’” In re Fritch, 972 F.2d 1260, 1265, 23 USPQ2d
1780, 1783 (Fed. Cir. 1992) (citations omitted). An adequate showing of
motivation to combine requires “evidence that ‘a skilled artisan, confronted with
the same problems as the inventor and with no knowledge of the claimed
invention, would select the elements from the cited prior art references for
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