Appeal No. 1996-2211
Application No. 08/018,546
the claimed invention and those of the prior art; and (2) that the difference actually obtained would not
have been expected by one skilled in the art at the time of the invention. In re Freeman, 474 F.2d
1318, 1324, 177 USPQ 139, 143 (CCPA 1973).
We also recognize appellants’ attempt to distinguish culture medium from transportation
medium, in their September 22, 1993 (Paper No. 3) response. Appellants state “when culturing
embryos, conditions of CO concentration of 5% and a humidity of 100% are inevitable, and the
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circumstances surrounding embryos are different from those occurring during transport.” While
appellants appear to be making this statement in reference to transporting embryos in a frozen state, we
address their concerns as they may apply to the above new grounds of rejection. Claim 5 states “[a]
method of transporting bovine embryos . . . which comprises transporting said bovine embryos in a
transportation medium comprising a thiol compound . . . while maintained in a non-frozen condition.”
While the claims do not require any particular condition of transport other than the presence of a thiol
compound in the transportation media, the “which comprises” language of claim 5 does not exclude the
maintenance of the embryos in conditions different from those suggested by appellants. Therefore, the
basis for distinction is not appropriate given the current language of the claims.
OTHER ISSUES
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