Appeal No. 2001-0103
Application 08/763,465
specification); In re Prater, 415 F.2d 1393, 1404 05, 162 USPQ 541, 550-51 (CCPA
1969) (same).
Claim 1 requires a sleeve reaction chamber having a slot for insertion of reaction
fluid. We find that the art (at least as it is applied by the Examiner) insufficient to
support the prima facie case of obviousness. The so-called “fluid containment system”
of Figure 9, upon closer inspection of the specification of Heller, is a “sample
containment vessel 136 to contain the biological material under analysis or test”
(Column 15, lines 39-41). Figure 9 itself does not appear to show anything other than a
splash-guard type of arrangement. See especially the oval shaped portions in the
upper portion of Figure 9, which support the wall of the sample containment vessel
above the reactive chip. Further, the “vessel” is open. This disclosure simply would not
have suggested the invention as claimed to one of ordinary skill in the art. We do not
see the sleeve chamber, nor the slot therein as required by claim 1.
Where the Examiner fails to establish a prima facie case, the rejection is
improper and will be overturned. In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596,
1598 (Fed. Cir. 1988).
The rejection of Claims 1-14, 17-18, 22-23, and 25-38 under 35 U.S.C. §103 as
being unpatentable over Heller is reversed.
The Rejection of Claims 15-16 and 19-20 Under 35 U.S.C. §103(a) as being
Unpatentable over Heller in view of Northrup I
The Examiner states that Claims 15-16 and 19-20 are rejected under 35 U.S.C.
§103(a) as being unpatentable over Heller as applied to claims 1-14, 17-28, 22-23, and
25-38, further in view of Northrup I.
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