Appeal No. 1997-2513
Application No. 08/206,917
concentration of microparticles added to each sample is different.” The examiner
takes (Answer, page 5):
Official Notice of the equivalent function of a method which comprises
adding different volumes of particles of the same concentration to
obtain a different particle count and adding the same volume of
material having different concentrations to obtain a different particle
count and the use of either method to obtain a different particle count
would have been within the level of ordinary skill in the art absent a
showing of unexpected results.
In response appellants argue (Brief, page 7) “the rejection should be overturned in
view of … MPEP 706.02(a) … ‘if the [a]ppellant traverses such an assertion, the
[e]xaminer should cite a reference in support of his or her position.’” Appellants
assert (Brief, bridging sentence, pages 7-8) that no reference was provided in
response to their previous traversal of this rejection. However, the examiner argues
(Answer, page 10) with reference to Stewart that:
total particle count is equal to the concentration of the particles times
the volume of particles … Tp=CpVp. Therefore, equating T p1 to T p2 …
if one varies C p1 and maintains V p1 constant, one can vary V p2 and
maintain C p2 constant to obtain Tp1 = Tp2. [Footnote omitted].
Appellants agree (Reply Brief, bridging paragraph, pages 2-3) with the examiner
that “total particle count can be varied by maintaining a constant concentration and
varying the volume of the particles or alternatively, by maintaining a constant volume
and varying the concentration.” However, appellants dispute (Reply Brief, page 3)
“that the methods are ‘equivalent’ with respect to the instant invention.” Appellants
argue (Reply Brief, page 3) that “the method of Stewart et al, while clearly being
able to produce varying concentrations of particles by varying the volumes, is
nowhere near as useful” as the claimed invention. Appellants reason (Reply Brief,
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