Appeal No. 2003-1639 Page 7
Application No. 09/496,220
For the reasons set forth above, the decision of the examiner to reject claims 1,
3, 4, 11, 13, 15 and 18 to 20 under 35 U.S.C. § 103 as being unpatentable over
Shiraiwa in view of Garrett is reversed.
We have also reviewed the reference to Sullivan additionally applied in the
rejection of claims 2, 5, 6, 18, 21 and 22 but find nothing therein which makes up for the
deficiencies of Shiraiwa and Garrett discussed above. Accordingly, the decision of the
examiner to reject claims 2, 5, 6, 18, 21 and 22 under 35 U.S.C. § 103 as being
unpatentable over Shiraiwa in view of Garrett and Sullivan is also reversed.
REMAND
We remand this application to the examiner to ascertain the differences, if any,
between Shiraiwa and claims 1 to 6, 11, 13, 15 and 18 to 22. In ascertaining the
differences between Shiraiwa and the claims the examiner must interpret the claim
language. Thus, for example, with respect to claim 1, the examiner must determine
(1) if sample carriers are part of the claimed combination or only intended use; (2) the
scope of the phrase "shuttle table" and whether or not it is readable on any one of
Shiraiwa's ports 27, 28, 123;2, 3 and (3) if the claim language a mating support structure
2 The United States Patent and Trademark Office (USPTO) applies to the verbiage of the claims
before it the broadest reasonable meaning of the words in their ordinary usage as they would be
understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of
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