Ex parte ROLON et al. - Page 3



              Appeal No. 1997-0881                                                                                        
              Application No. 08/367,508                                                                                  


              paper wherein the combination of both punchouts is the minimum surface area required for                    
              testing.                                                                                                    
                                                      Discussion                                                          

                                         The rejection under 35 U.S.C.  103                                              
                    Obviousness is a legal conclusion based on the underlying facts.  Graham v. John                     
              Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966); Continental Can Co. USA, Inc.                       
              v. Monsanto Co., 948 F.2d 1264, 1270, 20 USPQ2d 1746, 1750 (Fed. Cir. 1991); Panduit                        
              Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1566-68, 1 USPQ2d 1593, 1595-97 (Fed.                            
              Cir. 1987).   Here, the dispositive question is whether one of ordinary skill in this art at the            
              time of the invention would have found it obvious to make a first punchout in a dried blood                 
              spot, which had previously been deposited on filter paper, and sequentially make at least a                 
              second punchout in the same dried blood spot, wherein the boundaries of the second                          
              punchout are entirely outside of the boundaries of the first punchout and the second                        
              punchout has an inner portion removed therefrom which is the first punchout.                                
                     The examiner has cited Yee as disclosing a blood testing method which utilizes                       
              filter paper which is first spotted with blood and allowed to dry.  Samples are removed                     
              from the filter paper using one or more punchouts in a predefined manner to obtain a                        
              uniform volume of the blood sample.  (Answer, page 4).  The examiner acknowledges                           


              that Yee (id.):                                                                                             


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