Appeal No. 1996-2211
Application No. 08/018,546
Takahashi et al, Ealy et al or Bannai for the culture medium of Hasler et al in view of the advantageous in
[sic] which Takahashi et al, Ealy et al and Bannai teach for their particular mediums.” The absence of a
“reason, suggestion or motivation” in the examiner’s statement of the rejection constitutes legal error.
In addition, none of the references relied upon by the examiner addresses the limitation of claim
6, drawn to transportation at 37EC. Claims 7 and 9 depend from claim 6, therefore, they also require
transportation at 37EC. In the bridging paragraph of pages 7-8 of the Examiner’s Answer, the examiner
states:
. . . However, the secondary references, Takahashi et al and Ealy
et al, both discuss the beneficial effects of the thiol compound on bovine
embryos which are cultured at temperatures ranging from 42EC to 38EC
[sic]. Thus one of ordinary skill in the art would have a reasonable
expectation that the thiol compound would have a beneficial effect on the
embryos at temperatures higher then [sic] room temperature, per se.
Accordingly, the skilled artisan would have a reasonable expectation of
success in transporting the bovine embryos in the thiol compound at
temperatures in the range of 37EC.
The examiner’s position is not convincing in view of Ealy’s teaching that glutathione was not effective at4
a temperature less than 42EC. Appellants’ Brief, at page 7, in reference to Ealy states “[a]t 38.5EC
neither additive was beneficial.” The examiner has not explained why the facts support the conclusion
4We also recognize that Ealy use glutathione at a concentration of 50nM, which is outside the range
required by claim 7.
6
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