Appeal No. 1999-1276 Page 9
Application No. 08/318,574
1438, 1442 (Fed. Cir. 1991).7 Accordingly, in establishing the prima facie case of
obviousness, Examiner has the burden of showing that, in using the catalase of the
secondary references in Johnson’s quantitation method (assuming arguendo that
chemical and enzymatic means of removing hydrogen peroxide are equivalent
alternatives), there would have been a reasonable expectation of success in
eliminating the hydrogen peroxide without decomposing the organic peracids.
Examiner acknowledges that Heath and Bittner do “not establish that
catalase does not degrade peracids” (Examiner’s Answer, p. 6). To overcome this,
examiner cites the Clements patents which teach using a washing/bleaching
composition comprising both organic peracids and catalase. According to the
examiner, “if the catalase degraded the reaction product, peracids, then it is difficult
to understand why it was employed by Clements and Clements et al”8. As we
understand it, examiner is arguing that, for the Clements’ composition to work, the
catalase must not decompose the organic peracid and, if that is so, then inherently
catalase does not decompose organic peracids.
7 "Where claimed subject matter has been rejected as obvious in view of a combination of prior art
references, a proper analysis under § 103 requires, inter alia, consideration of two factors: (1)
whether the prior art would have suggested to those of ordinary skill in the art that they should make
the claimed composition or device, or carry out the claimed process; and (2) whether the prior art
would also have revealed that in so making or carrying out, those of ordinary skill would have a
reasonable expectation of success. See In re Dow Chemical Co., 837 F.2d 469, 473, 5 USPQ2d
1529, 1531 (Fed. Cir. 1988). Both the suggestion and the reasonable expectation of success must
be founded in the prior art, not in the applicant's disclosure. Id."
8 “The best evidence available that catalase does not degrade peracids comes from the teachings
of Clements et al. (US Patent 4,338,210) and Clements (US Patent 4,427,566). These references
teach using catalase to control the hydrogen peroxide driven production of peracids. If the catalase
degraded the reaction product, peracids, then it is difficult to understand why it was employed by
Clements and Clements et al.” Examiner’s Answer, p. 6.
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