Appeal No. 1999-1206 Page 7
Application No. 08/394,608
substrate, e.g., X-gal. In addition, the method is directly quantitative because each blue
or magenta spot on the solidified medium represents a colony-forming unit. See the
Specification, page 5.
DISCUSSION
As even a cursory review of the representative claims reveals, there are
substantial differences in scope between the claims on appeal. Despite these
differences, the examiner has rejected all of the claims together, on the premise that
AEdberg discloses a medium for differential detection of E. coli from other
enterobacteria@ which Acouples both glucuronides and galactosides as chromogenic
substrates each having different visual endpoints,@ while Lay, Sadler and Watkins
Aappear[] to disclose all of the dye-galactoside substrates designated in the instant
claims,@ thus A[i]t would have been obvious . . . to substitute the known galactosidase
and glucuronidase substrates taught by Levy [sic, Ley], Sadler and Watkins for the
substrates taught by Edberg because they are similar in structure, function and form
and taught by Levy [sic, Ley] to be superior.@ Examiner=s Answer, pages 4 and 5.
As so often happens, in taking this Ashotgun@ approach to the claims, the
examiner has managed to miss the mark in every instance. Frankly, we are at a loss as
to how the examiner=s rejection relates to any one of the claims in particular.
Each of claims 18, 20 through 24, 29, 30, 34 and 35 requires, at a minimum, a
medium containing a magenta precipitate-forming β-galactosidase substrate: 6-
chloroindolyl-β-D-galactoside, 4,6-dichloroindolyl-β-D-galactoside, 6,7-dichloroindolyl-β-
D-galactoside, 4,6,7-trichloroindolyl-β-D-galactoside, or a salt thereof. Similarly, claims
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