Appeal No. 1996-2959
Application 08/399,853
contain the sample and are containers for the sample
analysis. The court decided [in] In re Dailey ([357
F.2d 669, 672-73,] 149 USPQ [47,] 49 [(CCPA 1966)])
“that the configuration of the container is a mere
matter of choice...” and not significant to define over
the prior art which is a similar device with a similar
function with a different container configuration. The
cited prior art and the instant invention perform the
identical function of gas analysis. Appellants’ have
not demonstrated the claimed configuration give[s]
results that would not have been expected by the
devices of the cited prior art (e.g. no unexpected
results because of the claimed configuration have been
demonstrated). In the absence of a showing of
unexpected results and in view of Dailey above, one
having ordinary skill in the art would have concluded
that configuration of the channels to contain the gas
would have been a mere matter of choice and not
sufficient to define over the art of record. It would
have been within the skill of the art to modify either
May or Stark et al. to configure the channels at angles
greater than zero in a radial pattern or perpendicular
to each other as a mere matter of choice [answer, pages
4 and 5].
This analysis fails from the outset due to the examiner’s
inaccurate interpretation of claims 1, 9 and 17 as requiring the
recited angle to be formed between the channel flow axes rather
than between the channel flow axes and the scanning section. The
resulting determinations by the examiner as to what one of
ordinary skill in the art would have recognized to be desirable
and found to be obvious are irrelevant because they are not
directed to the subject matter actually claimed. They also
suffer from a complete lack of factual support, a deficiency
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