Appeal No. 1996-0288 Page 6
Application No. 07/873,634
when dealing with particular combinations of prior art and specific claims,
but must set forth the rationale on which it relies.
In re Lee, 277 F.3d at 1345, 61 USPQ2d at 1435.
Here, the examiner has not adequately explained that the problem which forms
the basis for his first proposed reason for combining the references would have been
present and so recognized by a person of ordinary skill in the art. A fact-based
explanation is needed as to why the Cox product produced under anaerobic conditions
would expectedly contain so much oxygen that an active oxygen absorber would be
needed. We do not find that the examiner has properly established a prima facie case
of obviousness.
The examiner’s second alternative reason for combining the teachings of Cox
and Kasugai also lacks factual support in the record. The examiner asserts it would
have been obvious to place an oxygen absorber in the culture media system of Cox “in
order to generate the anaerobic atmophere of Cox.” If the examiner’s assertion is
viewed in the context of the combined disclosures of Cox and Kasugai without resort to
appellants’ description of the present invention, it is not apparent on what basis one of
ordinary skill in the art would have found it obvious to replace the glove box system of
Cox with the package of active oxygen absorber of Kasugai. Absent a fact-based
explanation of the examiner’s reasoning in support of this proposed substitution, we do
not find that the examiner has properly established a prima facie case of obviousness.
Having found the examiner has not established a prima facie case of
obviousness, we need not consider appellants' evidence of nonobviousness.
The decision of the examiner is reversed.
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