Appeal No. 1999-0334 Page 6
Application No. 08/150,747
analyte,@ (Id., page 7), thus, A[t]he binding protein . . . must retain the ability to bind with
its analyte and/or labeled analyte while . . . [bound] to the primary antibody@ (Id., page
8).
More importantly, A[i]n the suggested combination, an anti-antibody is on the
solid phase (Litt), then an antibody which binds folate binding protein (Høier-Madsen) is
bound to that anti-antibody.@ Brief, page 6. Again, as pointed out by appellants, A[t]his
is not the present invention.@ Id. Appellants argue essentially that the examiner=s
rationale for combining the references would tend to show that appellants Ahave
proceeded contrary to the accepted wisdom of the prior art.@ Brief, page 7. Appellants=
point is well taken, inasmuch as the examiner=s rationale is entirely concerned with
using a double antibody solid support or an intermediate binding structure to improve
antibody binding and stability, yet the claimed invention requires no such arrangements.
AThe name of the game is the claim,@ In re Hiniker Co., 150 F.3d 1362, 1369, 47
USPQ2d 1523, 1529 (CAFC 1998). Here, we have no reasoned statement from the
examiner as to why the claimed invention would have been unpatentable under 35
U.S.C. ' 103. 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). Here, we find no reason stemming from
the prior art relied on by the examiner which would have led a person having ordinary
skill in the art to the claimed invention. On this record, the only reason or suggestion to
combine the references in the manner claimed comes from appellants= specification.
Accordingly, we reverse the rejection of claims 34 and 35 under 35 U.S.C. ' 103.
The rejection of claim 33
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007