Ex parte Nogar

Board of Patent Appeals and Interferences

Jul 26, 2000

08412235 (B.P.A.I. Jul. 26, 2000)

Page 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for publication in a law journal and (2) is not binding precedent of the Board.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. 12
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte NICHOLAS S. NOGAR
____________
Appeal No. 1997-1861
Application No. 08/412,235
____________
ON BRIEF
____________
Before WARREN, KRATZ, and DELMENDO, Administrative Patent
Judges.
KRATZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's refusal
to allow claims 1-3, 5-8 and 10, which are all of the claims
pending in this application.
BACKGROUND
Appellant's invention relates to a method of determining
the amount of lead in a liquid blood sample. An understanding
Appeal No. 1997-1861
Application No. 08/412,235
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of the invention can be derived from a reading of exemplary
claims
1 and 10, which are reproduced below.
1. A method for determining the amount of lead in a
liquid blood sample, which comprises the steps of:
a. applying a known volume of blood to be investigated
to a lead-free, electrically conducting substrate;
b. drying the blood so applied;
c. analyzing the blood sample to exhaustion using
resonant laser ablation, selectively producing thereby an ion
count from lead atoms present therein; and
d. integrating the ion count; whereby the integrated ion
count is a measure of the lead content.
10. A method for determining the amount of lead in a
solid blood sample, which comprises the steps of:
a. placing the blood to be investigated on a lead-free,
electrically conducting substrate;
b. analyzing a portion of the blood using resonant laser
ablation, selectively producing thereby an ion count from lead
atoms present therein;
c. simultaneously analyzing an identical size portion of
the blood sample for sodium atom content using the same mass
Appeal No. 1997-1861
Application No. 08/412,235
The reference to step c in claim 10, step c appears to1
be internally inconsistent. The examiner should review this
matter and insure that any corrections that may be necessary
are made prior to final disposition of this application.
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spectroscopy apparatus as that used in step c, producing[1]
thereby an ion count from sodium atoms present therein;
d. obtaining the ratio of the ion count for lead atoms
to the ion count for sodium atoms; and
e. determining the sodium concentration in the blood
sample.
Appeal No. 1997-1861
Application No. 08/412,235
We note that Nogar was referenced by the examiner at2
page 4 of the final rejection; however, we do not consider
Nogar as being before us as evidence of obviousness in our
consideration of the examiner’s rejection. This is so since
the examiner’s stated rejection (see answer, numbered pages 3-
6) does not list Nogar as part of the evidence being relied
upon. See In re Hoch, 428 F.2d 1341, 1342 n.3, 166 USPQ 406,
407 n.3 (CCPA 1970).
Page 4
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Schmidt et al. (Schmidt), “LAMMA-Investigations of Biological
and Medical Specimens,” Scanning Electron Microscopy 1980/II,
pp. 623-631 (SEM Inc., AMF O'Hare, Chicago, IL).
Omenetto et al. (Omenetto), “Direct Determination of Lead in
Blood by Laser-excited Flame Atomic-Fluorescence
Spectrometry,” Analyst, Vol. 109, pages 1067-1070 (Joint
Research Centre, Chemistry Division, Ispra (Varese), Italy,
Aug. 1984).
Fearey et al. (Fearey), “Pulsed Laser Resonance Ionization
Mass Spectrometry for Elementally Selective Detection of Lead
and Bismuth Mixtures,” (Reprinted from Analytical Chemistry,
Volume
60, pp. 1786-1790 © American Chemical Society 1988).
Appellant additionally cites the following reference:
Nogar et al. (Nogar), “Chromium Detection by Laser Desorption2
and Resonance Ionization Mass Spectroscopy,” Analytical
Chemistry, Volume 64, p. 465 (1992).
Claims 1-3, 5-8 and 10 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Schmidt in view of Omenetto
and Fearey.
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Application No. 08/412,235
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Appeal No. 1997-1861
Application No. 08/412,235
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OPINION
We have carefully reviewed the respective positions
presented by appellant and the examiner. In so doing, we find
ourselves in agreement with appellant that the applied prior
art fails to establish a prima facie case of obviousness of
the claimed subject matter. Accordingly, we will not sustain
the examiner's rejection for essentially those reasons
advanced by appellant, and we add the following primarily for
emphasis.
The examiner (answer, page 5) acknowledges that Schmidt
does not teach “ . . . measurement of lead in blood, or use of
resonant laser ablation” as required by all of the appealed
claims herein. Nevertheless, the examiner contends that
[i]t would have been obvious to one of ordinary
skill in the art at the time the invention was made
to use the Schmidt et al. method to measure lead in
blood because it is generally known to measure lead
in blood as shown by Omenetto et al. and because of
the Schmidt et al. method detection sensitivity. If
one were not concerned with the time required to
analyze a single sample, it would have been obvious
to one of ordinary skill in the art . . . to measure
the sample to exhaustion because one of ordinary
skill in the art would have recognized that a
statistical distribution of analysis sites per
sample is a time saving measure which is used to
analyze a sample without using the whole sample when
the concentration of the analyte is expected to be
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Application No. 08/412,235
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relatively consistent throughout the sample. It
would have been obvious to one of ordinary skill in
the art . . . to use a resonant laser ablation
technique as taught by Fearey et al. because one of
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Application No. 08/412,235
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skill in the art would have recognized that the
technique would improve the detection because of
its selectivity for lead as shown by Fearey et al.
[Id.; pages 5-6.]
Our review of the references relied upon by the examiner
leads us to the determination that the examiner’s rejection is
founded on an inadequate evidentiary basis to establish the
obviousness of the claimed process within the meaning of
35 U.S.C. § 103. For example, not withstanding the examiner’s
opinion (answer, page 7), Schmidt does not specifically
suggest that the use of their laser microprobe-mass-analyzer
for measuring lead in blood would be more sensitive than the
laser-excited flame atomic-fluorescence spectrometry method of
Omenetto as alleged by the examiner. Indeed, Schmidt does not
disclose the analysis of lead in blood by their laser
microprobe-mass-analyzer or compare such an analysis with a
blood lead determination according to the method of Omenetto.
While Schmidt (page 623) does generally refer to atomic
absorption spectrometry as a technique that existed prior to
their work that was useful for routine quantitative analysis
with limitations they attempt to circumvent, such a general
discussion is hardly a teaching or suggestion regarding the
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Application No. 08/412,235
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use of a resonant laser ablation method corresponding to the
particularly claimed method herein for determining the amount
of lead in a liquid blood sample.
Neither has the examiner convincingly explained how the
teachings of Fearey would remedy the above-noted deficiencies
of Schmidt and Omenetto. While Fearey (see, e.g., page 1786)
does
disclose pulsed laser resonance ionization mass spectrometry
in analyzing bismuth and lead mixtures so as to avoid the
interference of lead in the analysis of large isotope ratio’s
in bismuth, Fearey does not teach or suggest resonant laser
ablation as a method for measuring lead in blood in a manner
so as to lead one of ordinary skill in the art to the herein
claimed process. Hence, on this record, we do not agree with
the examiner’s position regarding the obviousness of the
proposed modifications of Schmidt.
We note the mere fact that the prior art could be
modified as proposed by the examiner is not sufficient to
establish a prima facie case. See In re Fritch, 972 F.2d
1260, 1266 n.14,
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Application No. 08/412,235
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23 USPQ2d 1780, 1783-84 n.14 (Fed. Cir. 1992). The
determination of obviousness must be based on facts, and not
on unsupported generalities. See In re Freed, 425 F.2d 785,
787, 165 USPQ 570,
571 (CCPA 1970). Moreover, there must be some basis in the
references for concluding that the claimed subject matter
would have been obvious.
In our view, the motivation for the examiner's stated
rejection appears to come solely from the description of
appellant’s invention in their specification. Thus, the
record indicates that the examiner used impermissible
hindsight when rejecting the claims. See W.L. Gore & Assoc.
v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-13
(Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984); In re
Rothermel, 276 F.2d 393, 396, 125 USPQ 328, 331 (CCPA 1960).
Accordingly, we will not sustain the examiner’s rejection for
the reasons set forth above and as developed in appellant’s
brief.
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Application No. 08/412,235
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CONCLUSION
The decision of the examiner is reversed.
REVERSED
)
CHARLES F. WARREN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
PETER F. KRATZ )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
ROMULO H. DELMENDO )
Administrative Patent Judge )
PFK:hh
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Application No. 08/412,235
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Samuel M. Freund
LC/BPL MS D412
Los Alamos National Laboratory
Los Alamos, NM 87545