Appeal No. 1999-1397 Page 5
Application No. 08/303,924
cells for differentiation purposes, and the sizes of such microspheres are clearly outside
the range recited by the claims on appeal.@ Appellants acknowledge that Aa general
statement is made that the particles (microspheres) could have a size range of >1/10 to
ten times= that of the particles to be measured@ (Id.), but point to the two embodiments
described in the reference as evidence that it would not have been obvious from
Kortright=s description that the microspheres should be smaller than the cells, much
less that they should have diameters in the range of 0.65 to 3.0 microns. Specifically,
A[i]n [Suzuki=s] first embodiment, latex particles of 19.8 and 44.1 microns are used, . . .
and it is stated that particles having a size larger than the size of blood cells are
>preferable=,@ while in Suzuki=s Asecond embodiment . . . the latex particles
(microspheres) are 0.33 microns in size . . . significantly smaller than those recited by
the claim on appeal.@ Id.
Nor are we persuaded by the examiner=s argument that the specification teaches
that Aother types and sizes of microspheres . . . may be utilized in the method of the
instant invention,@ thus, appellants Afail[ ] to provide support for the criticality of the
argued parameters.@ Examiner=s Answer, page 7. The flaw in this reasoning is that it
puts the cart before the horse, effectively negating an explicit limitation in the claims
based solely on appellants= disclosure, rather than the teachings of the prior art. The
criticality of a limitation is immaterial if there is nothing in the prior art to suggest it in the
first place.
The initial burden of presenting a prima facie case of obviousness rests on the
examiner. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). The rejection of claims 129-132 and 134-140 under 35 U.S.C. ' 103 is reversed
because the examiner has not established that all of limitations of the claims on appeal
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