Appeal No. 2002-0780 Page 9
Application No. 09/128,340
Also since surfactants are well known in the art to reduce
surface tension, the reduced surface tension of the liquid containing
the cells is the result expected of a liquid containing a surfactant.
Thus, the reduced surface tension of the liquid is merely an
expected successful result. Because this result is obtained by an
obvious modification of the prior art, the reduction in surface
tension of the liquid is obvious.
The purpose of this cryptic discussion on surface tension is unclear. It may be
that the examiner’s statement implies a reference back to her statement (Answer,
page 4), “Buck describes Triton X-100 and Tween to be useful for cell disruption.
These are well known surfactants in the art.” The buffer solutions of Buck,
however, were not used in Buck’s sonication method. Instead, the cells in Buck’s
sonication method were suspended in distilled water. Similarily, Robson
discloses the use of buffer solutions for their heat lysis method3, but use water in
the sonication methods exemplified.
Therefore, while buffer solutions containing detergents such as Tween 20
are mentioned in Buck and Robson we are unable to identify any suggestion to
use these solutions in a method of sonication. While a person of ordinary skill in
the art may possess the requisite knowledge and ability to modify the protocol
taught by the prior art, the modification is not obvious unless the prior art
suggested the desirability of the modification. In re Gordon, 733 F.2d 900, 902,
211 USPQ 1125, 1127 (Fed. Cir. 1984). On this record the examiner identified
detergents and buffers in the prior art relied upon but has failed to provide any
3 Robson, column 6, lines 26-30 (“[i]n the most basic embodiment of the invention a sample …
containing the intracellular components desired is heated to obtain readily useable components.
The organism to be lysed can be in H2O, but also can be in suitable buffers…and detergents
such as 0.5% Tween 20 and 0.5% Nonident P-40.”).
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