Appeal No. 2001-1654 Page 8
Application No. 08/445,584
combination in the manner claimed.’” Ecolochem, Inc. v. Southern Calif. Edison
Co., 227 F.3d 1361, 1375, 56 USPQ2d 1065, 1075 (Fed. Cir. 2000) (quoting
In re Rouffet, 149 F.3d 1350, 1357, 47 USPQ2d 1453, 1456 (Fed. Cir. 1998)).
In this case, although the references suggest most of the limitations of the
claims, they are not adequate to support a prima facie case under § 103. On the
one hand, the combination of Duermeyer and Unger appears to be reasonable.
Both references disclose assays to detect an antigen-specific antibody of class
IgA, IgM, IgD, or IgE, and both refer to the problem of RF-induced false positives.
See Duermeyer, column 2, lines 10-19, and Unger, column 2, lines
22-33. Duermeyer discloses avoiding false positives by using “a labelled antigen
binding fragment of an antibody” for detection (column 2, lines 56-61), while
Unger addresses the same problem by pretreating the sample with anti-IgG
(column 3, lines 5-11). Thus, Unger and Duermeyer teach complementary
methods of addressing the problem of RF-induced false positives. A person
skilled in the art would have found it obvious to include Unger’s anti-IgG
pretreatment step in Duermeyer’s assay, in order to further reduce the incidence
of RF-induced false positives. We agree with this much of the examiner’s
analysis.
However, we do not agree that the references would have suggested
conducting the claimed assay in a “simultaneous incubation” of all the recited
components, as required by both claims 16 and 17. The examiner relies on
David to meet this limitation, but we find David’s disclosure to be more limited
than the examiner characterizes it.
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