Appeal No. 1997-2373
Application No. 08/333,880
instant claims. Cazer’s apparatus does not include the mixing valve required by
claim 1, although it does contain a “solvent selection zone 37 for selection,
mixing, or combining of the solvent mobile phases.” See column 12, lines 42-44.
The examiner argues that the skilled artisan would have found it obvious to
include a mixing valve in the disclosed apparatus, and that a mixing valve is not a
patentably distinctive feature, but she cites nothing in the references that would
have suggested a mixing valve to those skilled in the art.
Similarly, Mowery’s apparatus does not contain “a detection line . . .,
wherein one sample volume is passed directly through said detector means and
another is passed through [the] column and said detector means,” as required by
claim 29. The examiner argues that Mowery’s device could be modified to
operate in such a way but again cites nothing in the prior art that would have led
a person skilled in the art to so modify the device.
The rationale relied on by the examiner does not support a prima facie
case of obviousness. Even though Cazer’s apparatus could be modified to
include a mixing valve in the solvent selection zone, and Mowery’s apparatus
could be modified to send part of the sample volume directly to the detector, it
would not have been obvious to so modify the prior art devices, unless there was
motivation to do so. The examiner has pointed out nothing in the prior art that
would have led a person of ordinary skill to make the necessary modifications.
The cited references therefore do not establish prima facie obviousness.
One final note: the examiner has cited the case of In re Japikse, 181 F.2d
1019, 86 USPQ 70 (CCPA 1950), for the supposed rule that “rearranging parts of
6
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007