Appeal No. 1996-3409
Application No. 08/092,543
serial no. 08/105,482 (‘482). The present claims are directed to “diagnosis,” while the
claims of the ‘482 application are directed to “screening.” The examiner sets forth the
obviousness relationship between these sets of claims, and provides tenable reasoning
(Examiner’s Answer, paragraph bridging pages 11 and 12). Appellant does not counter
the examiner’s reasoning, arguing only that the limitations “diagnosing disorders in a test
individual,” “fluid samples,” and “predetermined molecular constituents” are not found
verbatim in claim 1 of the ‘482 application and, therefore, that the instant claims “would not
have been anticipated or rendered obvious by claims 1-20 of the ‘482 application.” See
page 27 of the Brief. This general argument does not controvert the examiner’s position
with a reasonable degree of specificity. Accordingly, we affirm the provisional rejection of
claims 1 through 20 under the doctrine of obviousness-type double patenting.
Claims 1, 2 and 10 stand rejected as unpatentable over claims 1 through 4 of U.S.
Patent No. 4,863,873, under the doctrine of obviousness-type double patenting;
claims 1 through 5 and 7 through 10 stand rejected as unpatentable over claims 1, 4
through 8, 10, 12 through 16, 18, 19, 22 and 23 of U.S. Patent No. 5,104,639, on the same
ground. None of the patented claims recites comparison with a frequency distribution
database, nor is that limitation adequately addressed in either rejection.
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