Appeal No. 2002-0795
Application No. 09/128,036
of reagents/reactants in the apparatus and method of Cody would
have frustrated the purpose and testing procedure taught by this
reference. See In re Gurley, supra.
The examiner states that the motivation for modifying Cody
with the mixtures of reactants of Smith is that Smith teaches
that “use of mixtures can provide simplicity to the reactions and
workup (see page 2822, top).” Answer, page 4 (see also pages 6
and 8). However, the only teaching found on page 2822 (top) of
Smith is that “[t]he synthesis utilises a very simple chemical
coupling protocol and does not generate any biproducts which
could interfere with biological assays.” The examiner has not
explained why the chemical coupling protocol of Smith is simpler
than the chemical coupling disclosed by Cody or why the “workup”
of Smith, directed to a mixture of many similar products, would
have been easier or simpler than the “workup” of Cody, which is
directed to the preparation of only one compound per reaction
tube. Therefore we determine that the motivation proposed by the
examiner is not sufficiently supported by the evidence of record.
The examiner’s alternate motivations to combine the
references, i.e., “structural similarity,” and “design choice or
optimization” (Answer, page 6), are also not supported by any
convincing evidence on this record. The examiner has failed to
6
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007