Appeal No. 1999-1276 Page 7
Application No. 08/318,574
chemical means with enzymatic means.” Brief, p. 105. Rather than pointing to
something in the prior art that would suggest the desirability of replacing the
chemical means in Johnson with catalase, Examiner argues that the two techniques
– Johnson’s chemical and Heath and Bittner’s enzymatic techniques – are known
equivalents6 ; the argument being that, given knowledge that chemical and
enzymatic hydrogen peroxide removal techniques are equivalent, one of ordinary
skill would look to either alternative to accomplish the same result. For two reasons,
the argument is unpersuasive.
First, there is no evidence to support Examiner’s position that chemical and
enzymatic hydrogen peroxide removal techniques are known equivalent alternatives.
While the combined disclosures of Johnson, Heath and Bittner would appear to
suggest that hydrogen peroxide could be removed by either certain chemical
reagents like Ce(IV) and KMnO4 or catalase, these peroxide removal agents are
5 The passage reads in its entirety: “From the above, the Examiner ignored the fact that one of
ordinary skill in the art can not simply use catalase in decomposing a high background of hydrogen
peroxide in a method for quantitating the organic peracid without the motivation or suggestion in the
prior art to replace the chemical means with enzymatic means. Moreover, the use of catalase
could substantially affect the organic peracid being assayed. It is well known in the art that
catalase is among the fastest enzymes known, i.e., each molecule of catalase can decompose
more than 107 molecules of H2O2 a second. Furthermore, catalase is a large enzyme having a
244,000 to 250,000 molecular weight, which catalyzes the rapid decomposition of hydrogen
peroxide into water and oxygen [see p. 7 pf the specification]. However, Appellants were able to
use catalase in decomposing hydrogen peroxide without substantially affecting the organic peracid
that is being quantitated. Note Tables I-II of the Appellants’ specification.” Brief, p. 10.
6 “Regarding the equivalency of chemical means with enzymatic means to remove excess
hydrogen peroxide, it is well known in the chemical arts to perform the same process by selecting
either chemical means or enzymatic means depending upon the desired result. Heath and Bittner
teach employing catalase for the removal of hydrogen peroxide in the presence of other peroxides.
One would have a high expectation of success in employing known enzymes for their known
function to perform an equivalent function performed by other types of reagents.” Examiner’s
Answer, p. 10.
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