Appeal No. 1999-1276 Page 4
Application No. 08/318,574
reagents such as Ce(IV) and KMnO4. For this reason, examiner relies on the
secondary art.
According to the examiner, Heath shows a quantitation method in which
catalase is used to remove hydrogen peroxide2 and Bittner, also directed to a
quantitation method, discloses that catalase is specific "for hydrogen peroxide and
not other peroxides"3. Finally, according to the examiner, the two Clements patents
show catalase used together with organic peracids to form a washing and
bleaching composition.
Examiner concludes:
It would have been obvious to a person of ordinary skill in the art at the time
the invention was made to employ catalase to remove the excess hydrogen
peroxide present prior to determining peracids because the art suggests that
catalase be used to remove hydrogen peroxide in the presence of other organic
peroxides and the art is consistent with the stability of peracids in the presence
of catalase.
Examiner’s Answer, p. 6. Notwithstanding examiner’s conclusion, we do not find
that examiner has made out a prima facie case of obviousness.
"To establish a prima facie case of obviousness based on a combination of
references, there must be a teaching, suggestion or motivation in the prior art to
make the specific combination that was made by the applicant." In re Dance, 160
2 “Heath et al. (Analytical Biochemistry) entitled “A New Sensitive Assay for the Measurement of
Hydroperoxides” on page 185 last paragraph bridging to page 186, specifically suggest the utility of
catalase for the removal of hydrogen peroxide in the presence of other peroxides.” Examiner’s
Answer, p 5.
3 “Bittner (3,677,903) entitled ‘Determination of Uricase Activity’ teaches in column 4 lines 33-37,
teaches [sic] the specificity of catalase for hydrogen peroxide and not other peroxides.” Examiner’s
Answer, pp. 5-6.
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