Appeal No. 2005-2446 Page 7
Application No. 09/951,099
Segel [ ] is the statement . . . that malic acid and Tris can be mixed to produce Tris-
maleate buffers of pH 5.7 to 8.6 . . . and the upper end of this range is substantially
below the ‘about 9.0’ minimum required in Dawson (indeed, the specific examples of
Dawson suggest a still higher pH is required)” (Brief, page 4).
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden
of presenting a prima facie case of obviousness. Only if that burden is met, does the
burden of coming forward with evidence or argument shift to the applicant.” In re
Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993). “[I]dentification
in the prior art of each individual part claimed is insufficient to defeat patentability of the
whole claimed invention. Rather, to establish obviousness based on a combination of
the elements disclosed in the prior art, there must be some motivation, suggestion or
teaching of the desirability of making the specific combination that was made by the
applicant.” In re Kotzab, 217 F.3d 1365, 1369-70, 55 USPQ2d 1313, 1316 (Fed. Cir.
2000).
On reflection, we agree with appellants that the cited references, viewed without
the benefit of hindsight, would not have suggested the claimed method to a person of
ordinary skill in the art. Quite simply, while we would agree with the examiner that Tris is
a well known and conventional component of buffers used in enzyme assays, we see
nothing in the evidence provided that would suggest the conventional use of Tris at pH
9.0 or above, where Dawson’s enzyme breakers would be inactive. While we would not
go so far as to agree with appellants “that the references, when considered as a whole,
teach away from the proposed combination” (Brief, page 5), neither do we find anything
in Dawson and Segel that particularly suggests the specific combination made by
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007