Appeal No. 2004-1734
Application No. 08/942,369
assuming, arguendo, that we agree with each component of his argument as to why the
applied prior art would have rendered the present invention obvious, we would still be
unable to sustain the rejection. The problem here is that the examiner has not
addressed each limitation present in the claims. Thus, the examiner has not considered
the invention as a whole. In re Ochiai, 71 F.3d 1565, 1569, 37 USPQ2d 1127, 1131
(Fed. Cir. 1995); Jones v. Hardy, 727 F.2d 1524, 1529, 220 USPQ 1021, 1025 (Fed.
Cir. 1983); W.L. Gore & Associates Inc., v. Garlock, Inc., 721 F.2d 1540, 1548, 220
USPQ 303, 309 (Fed. Cir. 1983).
First, we find that the examiner relies on Libman for disclosing the use of non-
selective media. However, we do not find, and the examiner has not pointed out, any
teachings or suggestion in Libman, Johnson or Thaller to include a signal-generating
substrate which is metabolized in said media in the manner described in representative
claim 20.
Second, we find that the examiner relies on Johnson for disclosing a medium
which is indicative of the antibiotic sensitivity of pathogens found in a urinary tract
infection. However, we do not find, and the examiner has not pointed out, any
teachings or suggestions in Johnson, Libman or Thaller to employ a uropathogenic-
specific media, and a signal-generating substrate which is metabolized, in the reservoir
containing the antibiotic.
Thus, since the examiner has not addressed two important limitations present in
the claims, we are compelled to reverse the rejection.
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