Appeal 2006-2897
Application 10/074,715
(1) their claim language “consisting essentially of” excludes Steaffens’
serum protein and detergent; and (2) the cited references do not “teach or
even suggest a composition that is capable of preserving thyroid stimulating
hormone (TSH) in a blood sample for at least about 3 weeks at an ambient
temperature of about 22 ºC.” Br. 5.
The Examiner responds that the claim language “consisting essentially
of” does not exclude Steaffens’ serum protein and detergent absent some
showing they “would have affected the novel characteristics” of the claimed
invention. Answer (Ans.) at 7. With respect to Appellants’ “being capable
of” language, the Examiner contends Appellants have merely recognized
“latent properties in the prior art composition” and such recognition “does
not render nonobvious an otherwise known composition.” Final Office
Action (mailed May 17, 2005) (FOA) at 11.
Given these contentions, the issue before us is as follows:
Would Appellants’ claimed preserving composition, “consisting
essentially of” a chelating agent and a cell lysing agent and “being capable
of preserving thyroid stimulating hormone” under the conditions recited in
the claim have been obvious in view of Steaffens’ stabilizing composition
comprising a chelating agent and a cell lysing agent?
FINDINGS OF FACT
I. The Invention
1. The specification describes the invention as follows:
“Biological fluid specimens are preserved and stabilized for later
analysis . . . with an aqueous biological fluid preserving
3
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