Appeal No. 2001-2410 Page 10
Application No. 08/914,700
However, we note that most of the kit claims are not limited to kits for
detecting C-reactive protein, and would appear to read on any kit comprising the
recited porous support, binding substance, and detector substance, for detecting
any desired analyte. Upon return of this application, the examiner should
consider whether the rejections of record adequately address the patentability of
the kit claims. Olsen appears to be especially relevant, although we have not
thoroughly reviewed the reference’s disclosure with respect to the claimed kits,
and we take no position on whether the reference renders the kit claims
unpatentable. The examiner is in a better position to make that decision.
In considering the patentability of the kit claims, the examiner should bear
in mind that prima facie obviousness does not require the prior art references to
suggest combining their disclosures for the same reason that Appellants
combined them. See In re Dillon, 919 F.2d 688, 692-93, 16 USPQ2d 1897, 1901
(Fed. Cir. 1990) (“[I]t is not necessary in order to establish a prima facie case of
obviousness that . . . there be a suggestion in or expectation from the prior art
that the claimed compound or composition will have the same or a similar utility
as one newly discovered by applicant.” (emphases in original)).
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