Ex parte DAVIS et al.

Board of Patent Appeals and Interferences

Jun 9, 1998

07897616 (B.P.A.I. Jun. 9, 1998)

Application for patent filed June 10, 1992. According1
to applicants, this application is a continuation of
Application No. 07/556,934, filed July 23, 1990, now
abandoned.
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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journal and (2) is not binding precedent of the Board.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. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte KENNETH A. DAVIS and ANTHONY J. WARD
________________
Appeal No. 95-1459
Application No. 07/897,6161
________________
ON BRIEF
________________
Before WINTERS, Administrative Patent Judge, McKELVEY, Senior
Administrative Patent Judge, and WEIMAR, Administrative Patent
Judge.
WINTERS, Administrative Patent Judge.
DECISION ON APPEAL UNDER 35 U.S.C. § 134
Appeal No. 95-1459
Application No. 07/897,616
-2-
This appeal is from a decision of the primary examiner
rejecting claims 1 through 18 under 35 U.S.C. § 103 as
unpatentable over Hill et al. (U.S. Patent No. 4,731,330) "in
view of" Molday (U.S. Patent No. 4,452,773); Hess, "Calcium
Inhibits Catecholamine Depletion by Reserpine from Carotid
Body Glomus Cells," 1 Brain Research Bulletin 359-62 (1976);
Collins et al., "Spectral Properties of Fluorescence Induced
by Glutaraldehyde Fixation," 29 The Journal of Histochemistry
and Cytochemistry no. 3, 411-14 (1981); and Hawkins et al.
(U.S. Patent No. 4,489,162) or Coulter (WO 90/04329).
On consideration of the record, including applicants'
Appeal Brief (Paper No. 19) and the Examiner's Answer (Paper
No. 20), it is
ORDERED that the examiner's decision rejecting claims 1
through 18 under 35 U.S.C. § 103 is reversed.
Neither Hill et al. nor Molday nor Hess is within the
field of applicants' endeavor, namely, preserving cells for
use as controls or standards in cellular analysis.
Furthermore, neither of those references is reasonably
pertinent to the particular problem with which the applicants
were involved, namely, preparing mammalian cells for use as
Appeal No. 95-1459
Application No. 07/897,616
-3-
reference particles in an immunoassay where the cells can be
dried and stored for later use while maintaining their light
scatter properties and maintaining autofluorescence at
essentially background levels.
Accordingly, we find that (1) the Hill et al., Molday and
Hess references are from a non-analogous art; and (2) the
hypothetical person having ordinary skill in this art is not
charged with constructive knowledge of these references. In
re Wood, 599 F.2d 1032, 1036, 202 USPQ 171, 174 (CCPA 1979).
Where, as here, the examiner relies on six references in
setting forth the statement of rejection under 35 U.S.C.
§ 103, and where three of those references are from a non-
analogous art, we hold that the cited prior art is
insufficient to support a conclusion of obviousness of claims
1 through 18. The examiner does not argue, and we do not
find, that the combined disclosures of Coulter, Hawkins et
al., and Collins establish a prima facie case of obviousness
of the subject matter defined in the appealed claims.
REVERSED
SHERMAN D. WINTERS )
Administrative Patent Judge )
Appeal No. 95-1459
Application No. 07/897,616
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)
)
)
FRED E. McKELVEY ) BOARD OF
PATENT
Senior Administrative Patent Judge ) APPEALS
AND
) INTERFERENCES
)
)
ELIZABETH C. WEIMAR )
Administrative Patent Judge )
Richard J. Rudrick
Becton, Dickinson and Company
One Becton Dr.
Franklin Lakes, NJ 07417-1880