Appeal No. 1999-1397 Page 4
Application No. 08/303,924
and electronic detection means provides for a more complete analysis of the cells
because together, these measurements provide the ability to differentiate at least five
types of leukocytes,@ and A[t]he three sensing parameters are conventional in the art . . .
and thus a skilled artisan would have had a reasonable expectation of success in
combining all three for a complete analysis of the WBC subsets.@ Examiner=s Answer,
page 4.
Appellants argue that all of the claims on appeal require microspheres between
about 0.65 and 3.0 microns in diameter, but Athis size range is nowhere to be found in
the cited references.@ Brief, page 7. We note that this size range is not mentioned in
the statement of the rejection either. Nevertheless, in responding to appellants=
argument, the examiner concludes that even though Kortright Adoes not specifically
teach the size of the microspheres, it is obvious from [Kortright=s] description that the
microspheres should be smaller than the cells so that a plurality of microspheres is
attached to the cells.@ Examiner=s Answer, page 6.
On first impression, the examiner=s conclusion does not appear to be
unreasonable, but there is no objective evidence of record to support it. It is improper
for this board, and for that matter the examiner, to hold claims unpatentable for
obviousness based on conclusory statements about what can be characterized as
Acommon knowledge@ or Acommon sense,@ without objective evidence in support of that
knowledge. See In re Lee, 277 F.3d 1338, 1344, 61 USPQ2d 1430, 1434-1435 (Fed.
Cir. 1992). In any case, there is evidence of record, which the examiner has not
addressed, that would seem to undermine the examiner=s position. According to
appellants (Reply Brief, page 1), Suzuki Aexpressly discloses attaching microspheres to
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