Appeal No. 1999-1276 Page 8
Application No. 08/318,574
used in very different environments. As we have indicated, Johnson uses its
chemical reagents in the context of quantitating organic peracids while Heath and
Bittner use catalase in the context of quantitating hydroperoxides and uricase,
respectively. The circumstances under which the chemical reagents and catalase
are used in the references are so different that it is impossible to predict how, or
even if, catalase could perform a hydrogen peroxide removing function in the context
of Johnson’s method of quantitating organic peracids. Accordingly, Examiner’s
position that chemical and enzymatic hydrogen peroxide removal techniques are
known equivalent alternatives is based on speculation.
Second, even if evidence was available to show that these techniques are
known equivalent alternatives, simply replacing the chemical reagents in Johnson
with the catalase of the secondary references does not establish a prima facie case
of obviousness for the claimed method. As appellants have indicated (see footnote
5, supra), the claimed method requires reacting all of the hydrogen peroxide present
in the solution and without decomposing the organic peracid present in the solution,
features not taught in any of the references. There must be a reasonable
expectation of success that, in using catalase in Johnson’s method, hydrogen
peroxide is eliminated without decomposing the organic peracids. "Both the
suggestion and the reasonable expectation of success must be founded in the prior
art, not in the applicant's disclosure." In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d
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