Appeal No. 95-1950
Application No. 08/061,928
prior art to rebut a prima facie case). For example, the
advantages described in the Farber declaration (e.g., see item
10 on page 10) relative to the "ThinPrep Processor" instrument
appear to be also applicable to the apparatus described in the
Zahniser patent. In re Baxter Travenol Labs, 952 F.2d 388,
392, 21 USPQ2d 1281, 1285 (Fed. Cir. 1991) (mere recognition
of latent properties in the prior art does not render
nonobvious an otherwise known invention).
In addition, the above noted "ThinPrep Processor"
instrument is not described in the Farber declaration with
specificity sufficient to allow an informed assessment of
declarant's statement "I consider the advantages summarized
above in Paragraphs 6, 7 and 9-15 to be, at least in part, the
direct result of both collecting and counting the cells on the
filter element of the ThinPrep Processor instrument in a
manner described in this application for patent" (declaration,
page 14) particularly in relation to whether the proffered
evidence of nonobviousness is commensurate in scope with the
claims on appeal. In re Grasselli, 713 F.2d 731, 743, 218
USPQ 769, 778 (Fed. Cir. 1983); In re Altenpohl, 500 F.2d
1151, 1159, 183 USPQ 38, 44 (CCPA 1974). Finally, the
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