Appeal No. 2005-1344 Page 17
Application No. 08/468,610
functionalities (the carboxyl groups) on the resin are charged at a pH of 5.0, the
pH of target protein binding. The examiner appears to reach this conclusion by
dividing the amount of sodium ions adsorbed by the resin at a pH of 5.0
(approximately 0.4 mg-equivalent sodium ions/gm of dry resin) by the total
amount of sodium ions that can be adsorbed by the resin (approximately 8.8 mg-
equivalent sodium ions/gm of dry resin) and then multiplying the result by 100%.
Id. The examiner’s calculation, however, does not appear to take into
consideration the total capacity of the resin – 10Meq/g, or the effect, if any, that
Boardman’s buffer may have on the resin’s capacity.
We encourage the examiner to clarify this issue.
III. Obviousness:
Prima facie obviousness based on a combination of references requires
that the prior art provide “a reason, suggestion, or motivation to lead an inventor
to combine those references.” Pro-Mold and Tool Co. v. Great Lakes Plastics
Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1629 (Fed. Cir. 1996).
[E]vidence of a suggestion, teaching, or motivation to combine may
flow from the prior art references themselves, the knowledge of one
of ordinary skill in the art, or, in some cases, from the nature of the
problem to be solved.... The range of sources available, however,
does not diminish the requirement for actual evidence. That is, the
showing must be clear and particular.
In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999)
(citations omitted). The suggestion to combine prior art references must come
from the cited references, not from the application’s disclosure. See In re Dow
Chemical Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed. Cir. 1988).
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