Appeal No. 2004-1734
Application No. 08/942,369
Brocco discloses an antibiotic assay for urinary pathogens which comprises
seventeen (17) dried antibiotics, which include inter alia, amoxicillin and clavulanic acid,
in various wells of a microtiter device. Brocco, pp. 4 and 10.
Rejection I
The examiner argues that it would have been obvious to one of ordinary skill in
the art
to include the nonselective medium of Libman in the method of Johnson where
the motivation would have been to provide a positive control for the microbial
growth, as suggested by Johnson. It would also have been obvious to use the
selective medium of Thaller as the selective medium in the method of Johnson
where the motivation would have been to “analyze very selectively” for organisms
causing an infection (Johnson, col. 3, lines 31-35) in order to presumptively
identify the causative organism in order to determine an appropriate course of
treatment, as suggested by both Libman (col. 2, lines 48-53) and Johnson (col. 3,
lines 30-39). One would also have been motivated to use the selective medium
of Thaller in the method of Johnson and Libman because it is an improvement
over other selective medium such as that taught by Libman. [Answer, pp. 5-6].
It is well established that the examiner has the initial burden under 35 U.S.C. §
103 to establish a prima facie case. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992); In re Piasecki, 745 F.2d 1468, 1471-72, 223 USPQ 785,
787-88 (Fed. Cir. 1984). To that end, it is the examiner’s responsibility to show that
some objective teaching or suggestion in the applied prior art, or knowledge generally
available in the art, would have led one of ordinary skill in the art to combine the
references to arrive at the claimed invention. Pro-Mold & Tool Co. v. Great Lakes
Plastics, Inc., 745 F.3d 1568, 1573, 37 USPQ2d 1626, 1629 (Fed. Cir. 1996).
We commend the examiner for his thoroughness in briefing this case, but even
9
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: November 3, 2007