Appeal No. 1997-2387
Application No. 08/082,373
OPINION
1. Rejection of claims 4 and 6 under § 102(b) as anticipated by Forrest
Anticipation requires that all elements of the claimed invention be described, either
expressly or under the principles of inherency, in a single prior art reference. In re Paulsen,
30 F.3d 1475, 1478-79, 31 USPQ2d 1671, 1673 (Fed. Cir. 1994); In re Spada, 911 F.2d
705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990).
Forrest discloses an assembly for use in immunoassays utilizing magnetically
attractable particles, comprising two independent components, (a) a plurality of test tubes
fixed to a planar support member and (b) a substantially planar base member having one
or more magnet means permanently located therein, wherein the assembly can be
manually inverted without movement of the test tubes relative to the planar support or the
base (abstract; c. 2, ll. 11-50). According to the examiner, the support member which
holds the test tubes "is inherently capable of resting on its side and the bottom of the test
tubes, effectively providing an incline. (see Figure 1)" (answer, sentence bridging pp. 6-7).
The dispositive question is whether claim 4 and its dependent claims all require an
apparatus having three separate components, i.e., a container, a magnetic sedimentation
means and an inclination means separate from the container for tilting the container, as
argued by appellants (brief, pp. 19-21; reply brief, pp. 6-9); or, whether the claimed
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