Appeal No. 2001-1409 Page 6
Application No. 09/044,214
The particulate removal step which can include pre-filtration or
centrifuging is required to enable use of the “flow-through” assay
design. . . . Thus, neither TODD nor ARCHETTI would have
suggested nor motivated one of skill in the art to combine the
elements of the invention as claimed to produce the resulting useful
assay.
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial
burden of presenting a prima facie case of obviousness. Only if that burden is
met, does the burden of coming forward with evidence or argument shift to the
applicant.” In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir.
1993). The prima facie case must account for all the limitations of the claims.
See General Foods Corp. v. Studiengesellschaft Kohle mbH, 972 F.2d 1272,
1275, 23 USPQ2d 1839, 1840 (Fed. Cir. 1992) (“[E]ach claim is an entity which
must be considered as a whole,” emphasis in original); In re Angstadt, 537 F.2d
498, 501, 190 USPQ 214, 217 (CCPA 1976) (“[W]e must give effect to all claim
limitations,” emphasis in original).
In this case, we agree with Appellants that the examiner has not shown
that the cited references would have made obvious the method and kit defined by
the claims. The examiner has failed to account satisfactorily for at least one
limitation in both the kit claims and the method claims. The kit claims require,
among other things, a “filter to remove particulate matter from a saliva sample.”
The examiner argues that this limitation is disclosed by Archetti, “because
Archetti et al. specifically teaches the use of a filter when using saliva samples,
i.e., cotton balls.” Examiner’s Answer, page 4.
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