Appeal No. 1997-2513
Application No. 08/206,917
While the examiner suggests (Answer, page 12) that Stewart teaches
particles having different emission spectra, the examiner does not explain why one
of ordinary skill in the art would select the necessary elements from Schwartz for
combination with Stewart in the manner claimed by appellants. We remind the
examiner that “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.” See Ecolochem 227 F.3d at 1375, 56 USPQ2d at 1075.
Bronsan, relied on by the examiner (Answer, page 7) “for the fact that it is
known to detect T-cells that bear CD3 antigens using flow cytometry analysis
techniques,” fails to make up for the deficiencies in the combination of Stewart in
view of Schwartz.
Therefore, in our opinion, the examiner failed to meet her burden of
establishing a prima facie case of obviousness. Accordingly, we reverse the
examiner’s rejection of claims 5, 6 and 8-11 under 35 U.S.C. § 103 over Stewart in
view of Schwartz and Bronsan.
Claim 12:
According to the examiner (Answer, page 7) “Valet teaches a method for the
simultaneous quantitative determination of cells using a flow cytometer. Valet
further teaches that carbocyanines are well known fluorescent dyes used in flow
cytometry analysis techniques.” The examiner therefore combines Valet with the
teachings of Stewart, Schwartz and Brosnan finding (Answer, page 8) that “[i]t would
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