Appeal No. 2001-2521 Page 6
Application No. 08/738,464
or no affinity for the analyte of interest. However, such second
sensor would really be like a control or a blank which would correct
for any non-specific interaction of the sensor surface with an
analyte. Nothing unobvious is seen i[n] the use of a control sensor
for correcting non-specific interactions between the sensor and the
analyte.
Examiner’s Answer, pages 10-11.
The examiner’s conclusory statement that “nothing unobvious is seen in”
the use of a second (reference) sensor is inadequate to show that such a sensor
would have been suggested by the prior art. “It is fundamental that rejections
under 35 U.S.C. § 103 must be based on evidence comprehended by the
language of that section,” In re Grasselli, 713 F.2d 731, 739, 218 USPQ 769, 775
(Fed. Cir. 1983), not on unsupported assertions of what would or would not have
been obvious. The rejection based on Issachar is reversed.
2. Myerholtz and DeFord or Ligler
The examiner also rejected claim 1 as obvious over Myerholtz in
combination with either DeFord or Ligler. The examiner characterized Myerholtz
as teaching a system for measuring analytes in liquid samples. See Paper No. 2,
mailed August 21, 1995, page 5. The examiner noted the Myerholtz’s system is
in many ways similar to that used in the instantly claimed method, but
acknowledged that it “differ[s] from the instant invention in that the [prior art]
measurement system is configured for individual liquid samples rather than a
continuous liquid stream.” Id.
The examiner relied on DeFord or Ligler to make up this deficiency in the
primary reference. He characterized DeFord as teaching “a column
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