Appeal No. 2006-0650 Page 7
Application No. 10/007,613
does not impart the necessary function that the claimed system be designed to
eliminate them.
Having construed the claim to not require prion decontamination, any motivation
to have combined the elements is adequate to establish obviousness under § 103. In
In re Dillon, 919 F.2d 688, 693, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990), the court held
“it is not necessary in order to establish a prima facie case of obviousness . . . that there
be a suggestion or expectation from the prior art that the claimed [invention] will have
the same or a similar utility as one newly discovered by applicant.”
The key elements recited in claim 56 include: (b) means for heating articles; (c) a
proteolytic enzyme which is a keratinase; and (d) means for exposing articles to
enzyme. (Keratinase was elected in response to a restriction requirement.)
The claimed system, as we have construed it, is not restricted to a single
apparatus, but can comprise a set of interrelated elements having no particular
configuration. Huth gives an example of a system for disinfecting medical devices
having elements (b)-(d). Huth, column 27, line 66-column 28. The system (“SterisŪ
System 1™”) is described in which a solution containing a proteolytic enzyme (element
(c) in claim 56) is delivered to the device for “approximately a 12 min period at between
about 43-48°C.” Id., column 28, lines 29-43. The delivery (Id., column 28, lines 35-36)
and the 12 minute disinfection step at about 43-48°C clearly reflect the existence of the
heating means (b) and exposing means (d) of claim 56. The temperature range falls
within the claimed range of “from about 40°C to about 60°C.”
The use of subtilisin-A is described in the Huth example. Id., column 28, line 24.
However, Huth describes the use of keratinases in other sections of the patent (column
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