Appeal No. 2002-2279 Page 8
Application No. 08/556,667
on by the examiner. Grenier’s particles (and Pry’s) need only have a “density and
overall size . . . such that a rapid dispersal by agitation and sediment by gravity is
facilitated” (Grenier, column 3 line 68 to column 4, line 2). The particles are described
in an open-ended way as “having a density greater than water” (id., column 4, line 4),
but there is nothing to indicate that any of the particles have anything approaching twice
the density of Reynolds’ bone marrow cells. Indeed, there would appear to be no
dispute that the densest particle described by Grenier (and Pry) is composed of
Trisacryl®, which, according to appellants, has “a density of about 1.12 ± 0.03 gm/cc”
(Brief, page 5), while blood cells, i.e., bone marrow cells, “have a density of about 1.05
gm/cc” (id.). Since density is not a factor in Reynolds’ method at all, and Grenier
indicates that Trisacryl® particles are “easily suspended in solution yet sufficiently
dense to rapidly sediment by gravity” (column 8, lines 24-25), we see no reason or
suggestion, apart from appellants’ specification, to modify the density of the particles to
the extent required by the claims.
In our opinion, the only reason or suggestion to modify Reynolds, Grenier and
Pry in the manner proposed by the examiner comes from appellants’ specification.
Accordingly, we find that the examiner has not established a prima facie case of
obviousness for independent claims 4 and 5, the broadest claims on appeal. Giaever,
Falkenburg, Kessler and Patel were cited with respect to limitations of some of the
dependent claims, but do nothing to remedy the underlying deficiency of the examiner’s
proposed combination of Reynolds with Grenier or Pry, so we will not discuss them
further.
The rejections of the claims under 35 U.S.C. § 103 are reversed.
REVERSED
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