Appeal No. 1999-1337 Page 5
Application No. 08/393,232
record. See In re Lee, 277 F.3d 1338, 1343, 61 USPQ2d 1430, 1432 (Fed. Cir.
2002).
In our opinion, Ogawa and Kung fail to teach or render obvious the filter
step of appellant’s claimed invention wherein the filter is “characterized by a
highly inert and low-binding de-acetylated cellulose membrane capable of
removing proteins and peptides having molecular weights in the range of about
5,000 to about 30,000.” See e.g., claim 47, step (b). Furthermore, none of the
other references relied upon by the examiner make up for this deficiency.
Accordingly, we reverse the rejection of claims 35-42 and 47-49 under 35
U.S.C. § 103 as being unpatentable over Offidani, in view of Baumgartner,
Holmes, Kimmel, Biaglow, Ogawa and Kung.
The obviousness-type double patenting rejections:
According to appellant (Brief, page 11) “the unique use of the filter recited
in the claims is not an obvious advance over Applicant’s U.S. Patent No.
5,324,642 and copending Application Serial No. 07/737,703….”
We note that the examiner relies on Ogawa and Kung to make up for the
deficiencies in ‘642 and ‘703 with regard to the filter step of appellant’s claimed
invention. However, as discussed supra, Ogawa and Kung neither teach nor
render obvious the filter step as defined by appellant’s claimed invention.
Accordingly, we reverse the rejection of claims 35-42 and 47-49 under the
judicially created doctrine of obviousness-type double patenting as being
unpatentable over claims 1-24 of U.S. Patent No. 5,324,642, or claims 1-3, 5, 10,
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