Appeal 2007-0725
Reexamination Control 90/006,785
Patent 5,073,484
teaching immunoreactions in general and not for the specific method steps
claimed. (Office Action of 7 September 1984 at App. 4).6
Patentee has not shown that Deutsch was considered or relied upon in
the same way as it is now being considered and relied upon. Therefore,
Patentee has not shown that there was no basis for the finding of a
substantial new question of patentability.
Finally, we acknowledge Patentee’s argument directing us to a
decision of the Court of Appeals for the Federal Circuit discussing the
Deutsch reference in the context of an infringement action where the validity
of the ‘484 patent was being contested.7 We are mindful that a different
standard of assessing patentability is used in that context than in the context
of the present reexamination proceeding. Accordingly, we do not feel
compelled to come to the same conclusion as the Court of Appeals did
regarding the applicability of the Deutsch reference.
VI. Order
Upon consideration of the record and for reasons given, it is
ORDERED that the Examiner’s rejection of claims 22 and 23
under 35 USC §102(b) as being anticipated by Weiss is AFFIRMED;
6 Patentee also points out that Tom was relied upon in the 7 September
1984 Office Action for showing “a two enzyme system.” However, the
Office Action does not show that the combination of Deutsch and Tom was
ever considered or relied upon by the Examiner.
7 Abott Laboratories v. Syntron BioResearch Inc., 334 F.3d 1343, 67
USPQ2d 1337 (Fed. Cir. 2003).
19
Page: Previous 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 Next
Last modified: September 9, 2013