Appeal No. 95-0635
Application 07/768,255
Cir. 1992). This the examiner has not done. The examiner does
not provide an adequate evidentiary basis to sustain a prior art
rejection of claim 8 drawn to a cuvette having at least one
cavity,
said cavity being internally pretreated with a reagent
in dry form . . . the reagent being comprised of a
hemolyzing agent and agents used in the glucose
dehydrogenase method, said agents being comprised of
glucose dehydrogenase and a redox indicator dye.
In an effort to reach the hemolyzing agent and other "agents
used in the glucose dehydrogenase method," recited in claim 8,
the examiner refers to "references" and to "reagents . . . taught
by the prior art" and to acknowledged prior art. See the
Examiner's Answer, page 5, lines 11 through 23. However, the
rejection before the Board is predicated on 35 U.S.C. § 103, and
the only evidence included in the statement of that rejection is
Lilja. In the statement of rejection, the examiner does not
include any other prior art references or acknowledged prior art.
As stated in In re Hoch, 428 F.2d 1341, 1342 n.3, 166 USPQ 406,
407 n.3 (CCPA 1970):
Where a reference is relied on to support a rejection,
whether or not in a "minor capacity," there would
appear to be no excuse for not positively including the
reference in the statement of rejection.
In conclusion, the Lilja patent alone is insufficient to support
a conclusion of obviousness of claim 8 which includes the
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