Ex parte MANZ et al. - Page 6




         Appeal No. 1997-3328                                                    
         Application No. 08/226,605                                              


         current used to introduce the sample, which would lead one to           
         conclude the sample was electrokinetically introduced", that            
         Harrison teaches a "[s]ample is introduced electrokinetically           
         by applying a voltage between the separation channel and                
         supply channel" and that "[i]t would have been obvious to one           
         of ordinary skill in the art to combine the method of                   
         Verheggen and Harrison because electrokinetic injection is              
         conventional technique in the art of electrophoresis.                   
         Furthermore, both references deal with control of sample                
         introduction and electrophoretic separation" (the office                
         action of May 16, 1995, Paper No. 3, pages 3-4).                        
              Appellants state that "[t]he Examiner contends that such           
         a solution to the problem is obvious because the period of              
         applying the electric field is an art-recognized variable and           
         it would have been obvious to optimize it.  However, the                
         Examiner does not claim that the references suggest to solve            
         the problem recognized by Verheggen by optimizing the time              
         period that the electric field is applied" (brief, page 7).             
              The examiner notes that "maintaining the electric field            
         for a period of time sufficient to allow for slower moving              
         molecules to migrate is an art-recognized result-effective              
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