Appeal No. 96-1355
Application 07/896,209
The examiner does not specifically address the above quoted claim limitations or
appellants’ argument predicated on those limitations. According to the examiner, “[t]he
claim language is excessively broad and would read on an ordinary filter paper;” “Free
teaches the skilled artisan that erythrocytes and leukocytes both contain myeloperoxidase,
thus the skilled artisan wanting to determine the granulocyte content alone would separate
out all the red blood components to prevent erroneous results;” and “the references teach
the overall assay scheme and disclose methods of separating the various components of
blood . . . [t]hus, the skilled artisan measuring different components of blood knows how
blood is separated into components and also knows the assay procedure used in the art
for determining granulocyte content.” See the Answer, pages 8 through 10.3
In our judgment, the combined disclosures of the cited references are clearly
insufficient to support a conclusion of obviousness of claims containing the limitations
discussed above. 35 U.S.C. § 103 requires that obviousness be determined based on the
claimed subject matter as a whole. Where, as here, the determination of obviousness was
based on less than the entire claimed subject matter, the examiner’s conclusion of
3 With respect to the Free reference, the examiner is factually incorrect. As pointed
out in appellants’ Reply Brief, Free actually teaches that the hemoglobin in erythrocytes
exhibits a pseudo-peroxidase, or “peroxidative” activity. There is no mention of
myeloperoxidase in the reference.
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