Appeal No. 1999-1337 Page 4
Application No. 08/393,232
The examiner does not dispute appellant’s argument that only Kung and
Ogawa relate to the filtering step of appellant’s claimed invention.
THE REJECTION UNDER 35 U.S.C. § 103:
According to the examiner (Answer, page 6) Ogawa relates to an
immunological method of examining urine and discloses that “it is standard
practice to use other urine for a reaction test only after filtering it. Common
cellulose filter paper or absorbent cotton may be able to remove the turbidity, but
at the same time it is likely to absorb the HCG, too.” With regard to Kung, the
examiner finds (Answer, page 7) the hydrolyzed product following an enzymatic
treatment can be removed “for example, by centrifugation through a membrane
with a low molecular weight cutoff (approximately 10,000 or 30,000, such as a
Millipore low-volume ultrafiltration device).”
The examiner reasons (Answer, page 8):
One of ordinary skill would have been capable of
determining the best filter to use in the particular
circumstances, such as the Millipore filters used by Kung
et al., even though all of the potentially interfering
substances have not yet been identified, since Ogawa
provides guidance in the selection of an appropriate filter….
We note, however, as does appellant (Reply Brief, page 3) that the
examiner “fails to explain how it was obvious to use the particular type of protein
filter recited in the claims.” We are not persuaded by the examiner’s conclusion
that one of ordinary skill in the art would have been capable of determining the
best filter to use. We remind the examiner that a conclusion of obviousness over
the cited prior art combination must be supported by substantial evidence on the
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