Appeal No. 1999-1276 Page 5
Application No. 08/318,574
F.3d 1339, 1343, 48 USPQ2d 1635, 1637 (Fed. Cir. 1998). The mere fact that the
prior art could be modified to obtain the claimed process does not make 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). Something in the prior art as a whole must suggest the desirability and thus
the obviousness of making the combination. Lindemann Maschinenfabrik GmbH v.
American Hoist and Derrick Co., 730 F.2d 1452, 1462, 221 USPQ 481, 488 (Fed.
Cir. 1984).
Examiner has established that the references disclose various elements of
the claimed invention but has not pointed to anything in these references, and we
can find none, that suggest the desirability of modifying Johnson’s idiometric
method of quantitating organic peracids to replace the chemical reagents used
therein to remove hydrogen peroxide with the catalase of the secondary prior art.
Johnson is, like the claimed method, directed to a method of quantitating
organic peracids, albeit an idiometric method involving chemical reagents and not
catalase. Heath and Bittner use catalase to remove hydrogen peroxide but do not
quantitate organic peracids; instead, they quantitate hydroperoxides and uricase,
respectively. Furthermore, and in contrast to the claimed invention which introduces
the catalase to a solution of organic peracids and a high background of hydrogen
peroxide, Heath uses the catalase separately from the actual assay to initially
incubate the sample to remove hydrogen peroxide (see sentence bridging pp. 185-
186) and Bittner uses catalase to remove hydrogen peroxide generated as a by-
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