Appeal No. 2001-2337
Application No. 07/493,442
REJECTION OF CLAIMS 9 THROUGH 11, 14 AND 17 UNDER 35 U.S.C. § 103
In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden
of presenting a prima facie case of obviousness. See In re Rijckaert, 9 F.3d 1531,
1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie case of obviousness is
established when the teachings from the prior art itself would appear to have suggested
the claimed subject matter to a person of ordinary skill in the art. In re Bell, 991 F.2d
781, 783, 26 USPQ2d 1529, 1531 (Fed. Cir. 1993). Patentability of a claim under
35 U.S.C. § 103 must be premised upon considering the subject matter of a claim "as a
whole." Furthermore, as stated in Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc.,
75 F.3d 1568, 1573, 37 USPQ2d 1626, 1629 (Fed. Cir. 1996) (citation omitted): "It is
well-established that before a conclusion of obviousness may be made based on a
combination of references, there must have been a reason, suggestion, or motivation to
lead an inventor to combine those references." With this as background, we analyze
the prior art applied by the examiner in the rejection of the claims on appeal.
Claim 9 requires the use of ferricyanide. The examiner relies on the use of
cyanoferrate compounds in Hammond and Matsumoto to meet this limitation.
Hammond teaches the use of hexacyanoferrate complexes in acetaminophen assays
(Hammond, page 153, col. 2; appeal brief, page 5). Matsumoto also teaches the use of
cyanoferrate complexes, such as pentacyanoferric complex, in acetaminophen assays
(Matsumoto, col. 9, line 57 and col. 10, lines 3-5; appeal brief, page 6). However, the
examiner has not provided a fact-based explanation establishing that these compounds
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