Appeal No. 2001-2337
Application No. 07/493,442
are or include ferricyanide as required by claim 9.
In addition, claim 9 also requires “at least one layer comprising gelatin.” The
examiner does not point to any disclosure in any of the relied upon references that
would have taught or suggested this limitation.
In reviewing the examiner’s answer, we find that the examiner’s analysis does
not consider the subject matter of a claim "as a whole” as required by the statute.
Accordingly, we reverse.
REJECTION OF CLAIMS 13, 15 AND 16 UNDER 35 U.S.C. § 103
We also reverse this rejection since it is predicated on the references applied to
independent claim 9. The examiner’s reliance on the reference to Kawaguchi does not
overcome the deficiencies noted above.
OTHER ISSUES
Since the examiner did not meet the initial burden of presenting a prima facie
case of obviousness, we find no need to consider appellants’ argument or evidence of
unexpected results. However, we are compelled to note that the examiner did not
adequately consider the appellants’ argument or evidence of non-obviousness (appeal
brief, pages 9 through 11). According to the examiner, “in order for evidence of
unexpected results to be sufficient to rebut a prima facie case of obviousness, the
evidence must be commensurate in scope with the claims” (examiner’s answer,
paragraph bridging pages 10 and 11). While the examiner’s statement is correct, it
appears that the examiner has misapprehended and as a consequence misapplied this
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