Ex parte Arter et al.

Board of Patent Appeals and Interferences

May 26, 1999

07886263 (B.P.A.I. May. 26, 1999)

Application for patent filed May 20, 1992.1
-1-
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte THOMAS C. ARTER and MOHAN S. SAINT
________________
Appeal No. 95-4298
Application No. 07/886,2631
________________
ON BRIEF
________________
Before WINTERS, WILLIAM F. SMITH and LORIN, Administrative
Patent Judges.
WINTERS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 95-4298
Application No. 07/886,263
-2-
This appeal was taken from the examiner's decision
rejecting claims 1, 3 through 9 and 11 through 20, which are
all of the claims remaining in the application.
Claim 1, which is illustrative of the subject matter on
appeal, reads as follows:
1. An analytical element useful for the determination of
prostatic acid phosphatase in an aqueous specimen comprising:
a porous spreading zone containing
(a) a nonhygroscopic aromatic phosphate which
reacts as a substrate with prostatic acid phosphatase to
produce a phenol reaction product, said nonhygroscopic
aromatic phosphate substrate being an alkaline earth salt of
an aryl phosphate ester, and
(b) a diazonium or tetrazolium salt which is
capable of reacting with said phenol reaction product to
provide a chromophore,
said element further comprising a buffer which maintains
said element at a pH of from about 3 to about 6.5 when
contacted with an aqueous specimen.
The references relied on by the examiner are:
Schnabel et al. (Schnabel) 4,758,508 Jul. 19, 1988
Katsuyama 63-88000 Apr. 19, 1988
(Japanese Kokai patent application)
Marie Pernicova, "Proof of Prostatic Acid Phosphtase Activity
in Gel Carriers," Scripta Medica 259-64 (1971)
Appeal No. 95-4298
Application No. 07/886,263
-3-
The issue presented for review is whether the examiner
erred in rejecting claims 1, 3 through 9 and 11 through 20
under 35 U.S.C. § 103 as unpatentable over the combined
disclosures of Pernicova, Katsuyama and Schnabel.
On consideration of the record, we reverse the examiner's
prior art rejection.
DISCUSSION
First, we conclude that the examiner has not established
a prima facie case of obviousness for the reasons succinctly
stated in appellants' Appeal Brief.
Second, assuming arguendo that the examiner had
established a prima facie case of obviousness, the objective
evidence of nonobviousness relied on by appellants and set
forth in Example 1 of the specification, pages 14 through 16,
is sufficient to rebut any such prima facie case.
Respecting the latter point, we remind the examiner that
if a prima facie case of obviousness is established, and if
the applicant comes forward with reasonable rebuttal supported
by experimental evidence, the entire merits of the matter are
to be reweighed. As stated in In re Hedges, 783 F.2d 1038,
1039,
Appeal No. 95-4298
Application No. 07/886,263
-4-
228 USPQ 685, 686 (Fed. Cir. 1986):
If a prima facie case is made in the first instance,
and if the applicant comes forward with reasonable
rebuttal, whether buttressed by experiment, prior
art references, or argument, the entire merits of
the matter are to be reweighed. [Emphasis added,
citation omitted].
This the examiner did not do. The Examiner's Answer does not
come to grips with appellants' objective evidence of
nonobviousness, set forth in Example 1 of the specification
and relied on for patentability in the Appeal Brief.
The examiner's decision is reversed.
REVERSED
SHERMAN D. WINTERS )
Administrative Patent Judge )
)
)
)
)
WILLIAM F. SMITH ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
HUBERT C. LORIN )
Administrative Patent Judge )
clm
Appeal No. 95-4298
Application No. 07/886,263
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Appeal No. 95-4298
Application No. 07/886,263
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Audley A. Ciamporcero, Jr.
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New Brunswick, NJ 08933-7003