Appeal No. 2003-1019 Page 9
Application No. 09/524,132
Appellants’ point is well taken. We have no doubt that the prior art could be
modified in a manner consistent with appellants’ specification and claims. The fact that
the prior art could be so modified, however, would not have made the modification
obvious unless the prior art suggested the desirability of the modification. In re Gordon,
733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). Here, we find no reason
stemming from the prior art relied on by the examiner which would have led a person
having ordinary skill in the art to modify Townsend’s HPLC protocol to meet the specific
limitations of the claims directed to analysis of conjugated estrogens.
In our view, the references cited by the examiner do not support a prima facie
case of obviousness. Accordingly, the rejection of claims 1-5 , 8-22 and 25-48 under 35
U.S.C. § 103 is reversed.
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