Appeal No. 2003-1018
Application No. 09/093,771
In our view, the examiner has not sufficiently indicated, and we do not find, a
specific scientific or technological reason for one of ordinary skill in the art to substitute
reagents of Yoshimura used in a substrate solution for the preparation of protein films
using proteins such as ferritin (seeminly unrelated to soybean protein), as a basis or
motivation for substitution for the aggregating agents of Chayen, which form a soybean
protein/lipid complex having a particular ratio of lipid to protein. While the examiner
finds both sets of compounds to be “aggregating agents”, in our view the examiner has
failed to provide a sufficient scientific reason or nexus to support substitution of one
reagent agent for another. For example, the examiner has failed to indicate why one of
ordinary skill in the art would separate or select out only the salt component from the
glycerol component of the substrate solution of Yoshimura and use it as a protein/lipid
aggregating agent, and provide evidence in the prior art that the substance would still
work for its intended purpose. Nor has the examiner shown a sufficient reason why one
of ordinary skill in the art would expect that a portion of a substrate solution used to
create a ferritin two-dimensional film, would be useful in forming a soybean protein/lipid
complex.
“In proceedings before the Patent and Trademark Office, the Examiner bears the
burden of establishing a prima facie case of obviousness based upon the prior art. ‘[The
Examiner] can satisfy this burden only by showing some objective teaching in the prior
art or that knowledge generally available to one of ordinary skill in the art would lead
that individual to combine the relevant teachings of the references.’” In re Fritch, 972
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