Appeal No. 1999-1281
Application No. 08/712,249
The examiner argues (Answer, page 9) that “the specification appears to
indicate that the order in which the cations are reacted with heparin is not critical.”
However, as set forth in In re Ochiai, 71 F.3d 1565, 1572,
37 USPQ2d 1127, 1133 (Fed. Cir. 1995) “an applicant [is entitled] to issuance of an
otherwise proper patent unless the PTO establishes that the invention as claimed in
the application is obvious over cited prior art, based on the specific comparison of
that prior art with claim limitations.” In contrast to the examiner’s argument,
appellants argue (Reply Brief, page 3):
The claimed heparin composition is produced through a sequential
and selective blocking and binding of heparin reactive sites. A first
reaction utilizes a heavy metal, for example zinc or barium, to block
calcium active sites on the heparin molecule. A second reaction then
follows wherein lithium ions are utilized to bind those active sites
which were not previously reacted with the heavy metal. Accordingly,
the resultant heparin molecule so produced is “blocked” with both a
heavy metal and e.g. a lithium salt.
As set forth in [a]ppellants’ specification, this process
effectively limits the interaction of the heparin composition with any
calcium ions which may be present in a blood sample to be assayed.
This thereby obviates the need for added calcium or other artificial
corrective steps to correctly assay calcium levels in an unknown
sample.
Therefore, according to appellants, the order in which the cations are reacted
with heparin is critical. The criticality of the process steps is also discussed in
paragraph 7a of the Fiehler Declaration4.
The examiner argues (Answer, page 6) that “[t]he claims are not deemed to
be patentable over the prior art because appellants have merely provided a mixture
4 Executed May 14, 1997, attached to the Brief as Exhibit B.
4
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