Appeal No. 2001-1173 Page 7
Application No. 08/614,593
repeatedly changed … [and from] claim 20 since Gjaltema does not provide
plural biofilm adherent sites arranged in plural rows….” According to the
examiner (Answer, page 9), “Gjaltema was not cited to show change of flow.” In
addition, the examiner states (id.), “[a]pplicants[’] arguments regarding Darouiche
are not understood regarding sharing the medium where the steel nuts are the
surface upon which the biofilm forms and each nut may or may not have the
same medium as desired.” To clarify the issue with regard to Darouiche, as the
examiner explains (Answer, page 6), “stainless steel nuts were added to
cultures, placed in a shaking water bath to allow seeding. Then they were
transferred to tubes and incubated in a shaking water bath to form an adherent
biofilm.” Stated differently, the stainless steel nuts share the same liquid growth
medium only during the “seeding” step, not during the “biofilm growth” step. As
appellants’ explain (Brief, page 9), Darouiche “differs from the claimed invention
in that separate tubes are used, each with one steel nut in it for use as a biofilm
adherent site. The steel nuts do not therefore share a flow of liquid growth
medium.”
As set forth in In re Kotzab, 217 F.3d 1365, 1369-70, 55 USPQ2d 1313,
1316 (Fed. Cir. 2000):
A critical step in analyzing the patentability of claims pursuant to
section 103(a) is casting the mind back to the time of invention, to
consider the thinking of one of ordinary skill in the art, guided only
by the prior art references and the then-accepted wisdom in the
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