Appeal 2007-0725
Reexamination Control 90/006,785
Patent 5,073,484
points out that Deutsch was relied upon by the Examiner in the prosecution
of the 06/467,229 Application. (Br. at 14).
Patentee acknowledges that 35 USC § 303(a) does not preclude the
finding of a substantial new question of patentability where a reference was
previously cited or considered by the Office. Patentee’s argues, however,
that “[i]t is clear that Deutsch was viewed in the same light in the earlier
prosecution as the Examiner places on it in the current reexamination.” (Br.
at 14).
In support of its position, Patentee directs us to a 7 September 1984
Office Action, rejecting claim 10 of 06/467,229. (Br. at 14, directing us to
App. 4).
However, as noted by the Examiner, Deutsch was not cited against the
presently rejected claims. (Answer at 11). While Patentee takes the position
that previous claim 10 “included the steps of providing reaction zones,
flowing through reaction zones, and detecting the presence, just as in Claims
22 and 23.” (Br. at 14), a comparison of claim 10 with the presently rejected
claims reveals a difference in claim scope. For example, claim 10 requires
“spaced reaction zones” while the claims under rejection require “one or
more reaction zones.” Claim 10 is of narrower scope at least in that it
requires multiple reaction zones.
Even more to the point perhaps, is that, in the 06/467,229 prosecution,
Deutsch was not relied upon for the same reason the examiner now relies
upon it. In particular, Deutsch was relied upon, as a secondary reference, for
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