Appeal No. 1997-2387
Application No. 08/082,373
reactions, by totally doing away with said centrifugation. The centrifugal agglutination
apparatus of Bernoco would be no more. Second, the shortened agglutination reaction
times alluded to by JP '161 might be due to an increased density of ferromagnetic
particles relative to other prior art reagent particles, which may result in quicker
sedimentation of the ferromagnetic particles upon standing. Third, since the relative
speed of centrifugally accelerated separation depends on factors including the distance
from the center of rotation to the bottom of the vessel in the rotor cavity or bucket during
centrifugation and the speed of rotation of the rotor, the skilled artisan might just as easily
have modified either one of these two factors rather completely replacing the coaxially
directed centrifugal separation step of Bernoco with a magnetic separation step. Finally,
when a reference is relied on to support a rejection even in a "minor capacity," ordinarily
that reference should be positively included in the statement of rejection. In re Hoch, 428
F.2d 1341, 1342 fn 3, 166 USPQ 406, 407 fn 3 (CCPA 1970). Thus, we have not
considered the Davis disclosure in this rejection (answer, p. 9). Accordingly, we find that
the examiner has not carried her burden of establishing a prima facie case of
obviousness and has relied on impermissible hindsight in making his determination of
obviousness. In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1784 (Fed. Cir. 1992)
(It is impermissible to engage in hindsight reconstruction of the claimed invention, using
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