Appeal No. 1999-0334 Page 4
Application No. 08/150,747
folate binding protein. Id., page 4.
Litt describes Asolid phase immunoassays in which a double antibody coating is
used to provide a more stable assay reagent which requires very little primary antibod[y]
(antigen-specific antibod[y]) . . . provid[ing] the advantages of using less primary
antibody, and achieving a stable, reproducible assay reagent.@ Examiner=s Answer,
pages 3-4. Finally, Suter teaches that Asome antibodies function poorly when adsorbed
directly on a solid phase@ and advocates Ausing an intermediate linking structure such
as biotin/streptavidin@ Ato bind a capture antibody to a solid phase.@ Id.
Together, these prior art references establish that certain individual elements of
the claimed invention were known in the art.
AMost if not all inventions arise from a combination of old elements[, and] every
element of a claimed invention may often be found in the prior art. [ ] However,
identification in the prior art of each individual part claimed is insufficient to defeat
patentability of the whole claimed invention.@ In re Kotzab, 217 F.3d 1365, 1369-70, 55
USPQ2d 1313, 1316 (Fed. Cir. 2000) (citations omitted).
ATo prevent the use of hindsight based on the invention to defeat patentability of
the invention . . . the examiner [is required] to show a motivation to combine the
references that create the case of obviousness,@ i.e., Athe examiner must show reasons
that the skilled artisan, confronted with the same problems as the inventor and with no
knowledge of the claimed invention, would select the elements from the cited prior art
references for combination in the manner claimed.@ In re Rouffet, 149 F.3d 1350, 47
USPQ2d 1453, 1457-58 (Fed. Cir. 1998) (emphasis added).
Having established that individual elements of the claimed invention were known
in the art at the time of the invention, the examiner maintains that A[i]t would have been
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