Appeal No. 1999-1206 Page 8
Application No. 08/394,608
25, 27, 31 and 32 require, at a minimum, a magenta precipitate-forming β-
glucuronidase substrate: 6-chloroindolyl-β-D-glucuronide, 4,6-dichloroindolyl-β-D-
glucuronide, 6,7-dichloroindolyl-β-D-glucuronide, 4,6,7-trichloroindolyl-β-D-glucuronide,
or a salt thereof. The examiner has not pointed to a description of any of the required
magenta precipitate-forming substrates in the prior art. Rather, Ley, Sadler and
Watkins, relied on by the examiner as describing Aall of the dye-galactoside substrates
designated in the instant claims,@ appear to describe chromogenic substrates that form
blue precipitates (e.g., 5-bromo-4-chloro-3-indolyl-β-D-glucuronide (X-gluc)). Blue
precipitate-forming substrates like X-gluc or indoxyl-β-D-glucuronide are required by
some of the claims on appeal, but only in addition to magenta precipitate-forming
substrates.
In our judgment, the combined disclosures of the cited references are clearly
insufficient to support a conclusion of obviousness of claims containing the limitations
discussed above. 35 U.S.C. ' 103 requires that obviousness be determined based on
the claimed subject matter as a whole. Where, as here, the determination of
obviousness was based on less than the entire claimed subject matter, the examiner=s
conclusion of obviousness for claims with these limitations is legally unsound and
cannot stand.
Claim 28, directed to a generic method of Aquantitatively identifying and
differentiating@ organisms having β-galactosidase - but not β-glucuronidase activity - and
organisms with β-glucuronidase activity, in a single test with a single sample, is quite a
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