Appeal No. 1996-2211
Application No. 08/018,546
that “one of ordinary skill in the art would have a reasonable expectation that the thiol compound would
have a beneficial effect on the embryos at temperatures higher then [sic] room temperature, per se.”
The Bannai abstract relied upon by the examiner merely states “[r]ecently it has been found that
2-mercaptoethanol is effective in the . . . in vitro development of bovine embryos.” Keeping in mind that
the examiner relies upon the Bannai abstract, not the translation of the full text article, the examiner has
not explained how the abstract provides an enabling description of how $-mercaptoethanol was used to
have an effect on bovine embryos.
For the reasons above, we find the examiner has not established a prima facie case of
obviousness. Accordingly, the rejection of claims 5-9 under 35 U.S.C. § 103 is reversed.
NEW GROUNDS OF REJECTION UNDER 37 CFR § 1.196(b)
I. Claim Interpretation:
“The name of the game is the claim.” In re Hiniker Co., 150 F.3d 1362, 1369, 47 USPQ2d
1523, 1529 (Fed. Cir. 1998). In considering the issues raised in this appeal, we point out that “analysis
begins with a key legal question – what is the invention claimed?” since “claim interpretation . . . will
normally control the remainder of the decisional process.” Panduit Corp. v. Dennison Mfg. Co., 810
F.2d 1561, 1567, 1 USPQ2d 1593, 1596 (Fed. Cir.), cert. denied, 481 U.S. 1052 (1987). The
claimed invention is drawn to a “[m]ethod of transporting bovine embryos . . . which comprises
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