Appeal No. 1997-2513
Application No. 08/206,917
measured on the flow cytometer’ ….” Appellants contrast Schwartz (Brief, page 10)
from the instant invention which requires that “the emission spectra of the cell
markers and fluorescent microparticle are distinguishable (i.e., not matched)….”
The examiner does not find appellants’ argument persuasive. The examiner argues
(Answer, page 12) that “Stewart … teaches that the fluorescent particles have
different emission spectra from each other and the sample.” We are not persuaded
by the examiner’s position.
As set forth in Ecolochem Inc. v. Southern California Edison, 227 F.3d 1361,
1375, 56 USPQ2d 1065, 1075 (Fed. Cir. 2000) the:
“suggestion to combine may be found in explicit or implicit
teachings within the references themselves, from the ordinary
knowledge of those skilled in the art, or from the nature of the problem
to be solved.” … However, there still must be evidence that “a skilled
artisan, confronted with the same problems as the inventor and with
no knowledge of the claimed invention, would select the elements
from the cited prior art references for combination in the manner
claimed.” … “[A] rejection cannot be predicated on the mere
identification … of individual components of claimed limitations.
Rather particular findings must be made as to the reason the skilled
artisan, with no knowledge of the claimed invention, would have
selected these components for combination in the manner
claimed.”…. [Citations omitted].
On this record, Schwartz discloses (claim 1) a method of aligning,
compensating and/or calibrating a flow cytometer. Schwartz discloses (column 8,
line 48 to column 9, line 16) that it is important to use beads having the same
emission spectra as the sample in order to “perform accurate compensation
adjustments.” In contrast, Stewart teaches (abstract) “[a] simple procedure … to
simultaneously measure cell concentration and analyze marker positive cell
populations….”
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