Appeal No. 1997-2387
Application No. 08/082,373
inclination means can be integrated with the container as argued by the examiner
(supplemental answer, p. 4, ll. 13-16).
Here, when reading the apparatus claims in light of the specification, we agree with
appellants that "Claim 4, and all claims dependent thereon, require a separate device, an
‘inclination means’ which allows ‘the container’ to stand at an inclination after removal of
6
the magnetic sedimentation means" (reply brief, p. 6, ll. 14-17). Therefore, since Forrest
does not disclose or suggest a separate inclination means as required by claim 4 and its
dependent claims, the rejection of claims 4 and 6 under § 102(b) as anticipated by Forrest
is reversed.
2/3. Rejections of claims 5 and 7 under § 103 as unpatentable over Forrest in view of
Sakuma and the Takahashi abstract
To establish a prima facie case of obviousness, there must be both some
suggestion or motivation to modify the reference or combine reference teachings and a
reasonable expectation of success. Furthermore, the prior art must teach or suggest all
the claim limitations. In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir.
1991).
The examiner relies on Sakuma (Prior Art Figures 1 and 2) to show the
conventional use of v-shaped reaction vessels in the art of agglutination immunoassay
6See e.g., specification Reference Example 2, especially p. 18, ll. 3-7; Example 2, especially
p. 20, ll. 15-20; and Example 3, especially p. 22, ll. 5-10.
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