Appeal No. 2001-2027 Page 5
Application No. 09/059,573
an assay which would analyze lymphocytes for lymphocyte activation@ (Examiner=s
Answer, pages 4-5), when the examiner has not identified a reason to combine the
references in the first place.
The fact that the prior art could have been modified in a manner consistent with
appellants= claims would not have made the modification obvious unless the prior art
suggested the desirability of the modification. In re Gordon, 733 F.2d 900, 902, 221
USPQ 1125, 1127 (Fed. Cir. 1984). On this record, the only reason or suggestion to
combine the references in the manner claimed comes from appellant=s specification.
Accordingly, we are constrained to reverse the rejection of claims 1, 32, 33, 35 and 36
under 35 U.S.C. ' 103.
The rejection of claim 34
Claim 34 depends from claim 1 and requires a viral, bacterial or fungal inducing
agent. The examiner=s proposed combination of Ishizaka and Melnicoff forms the basis
of this rejection as well, with the addition of Gottlieb as evidence that it was known in
the art Athat any particular antigen or mitogen may be used to stimulate a[n] [immune]
response.@ The addition of Gottlieb does nothing to cure the underlying deficiency in
the proposed combination of Ishizaka and Melnicoff, thus, the rejection of claim 34
under 35 U.S.C. ' 103 is reversed as well.
REVERSED
)
Toni R. Scheiner )
Administrative Patent Judge )
)
) BOARD OF PATENT
)
Demetra J. Mills ) APPEALS AND
Administrative Patent Judge )
) )INTERFERENCES
)
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