Appeal No. 2001-0103
Application 08/763,465
As we have reversed the rejection over Heller as it applies to claims 1-14, 17-28,
22-23, and 25-38, we likewise reverse this rejection for the reasons enumerated above.
The Obviousness-Type Double Patenting Rejection of Claims 1-38 over Northrup II
Claims 1-38 stand rejected under the judicially-created doctrine of obviousness-
type double patenting over claims 1-22 of Northrup II. More specifically, the Examiner
states that the claims of Northrup II teach a sleeve reaction chamber with a slot
constructed to enable insertion of an insert or liner and a heating means for the
chamber, a window, a test strip, materials of construction and in an array in combination
with a hand-held instrument having microinjectors or microelectrophoresis, an optical
detector, and a controller as in instant claims 1-3, 5-6, 9-10, 21, 25-32, and 34-36
(Examiner’s Answer, page 7, lines 7-15). The Examiner additionally notes that the
remaining claims are obvious as the claimed materials were obvious choices for
microfabrication, that providing a space for the detector in the window would have been
an obvious design choice, that it would have been obvious to provide a cooler as well as
a heater to better control temperature, that it would have been obvious to provide a
plurality of elements to perform a plurality of reactions, and that it would have been
obvious to provide a flow path for electrophoresis.
The sum total of the Appellant’s argument is that “[a] comparison of Claims 1 and
2, for example of the instant application and claims 1 and 2 of the patent will clearly
establish that the claims are patentable [sic] distinct”. (Appeal Brief, page 17, lines 8-9).
The Appellant further notes the differences in scope of the claims, but offers no
reasoning as to why the Examiner’s position on obviousness is improper.
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