Appeal No. 2001-0352
Application 08/872,097
elements of which claims the Examiner might be referring to by the last paragraph and
we decline to speculate.
It is unnecessary for us to belabor the point by illustrating the deficiencies of each
of the other rejections as well. Suffice it to say, they each lack the requisite specificity
needed for the establishment of a prima facie case of obviousness. As the examiner
bears the initial burden of presenting a prima facie case of unpatentability (In re Oetiker,
977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992)), and that burden has
not been met in a manner enabling proper review, we vacate the rejections and remand
for the entry of appropriately written rejections.
However, this is not to say that we agree with the Appellants’ contention that the
claims are patentable. Upon remand, the Examiner should again consider the
patentability of the claims in light of the cited art. Indeed, we suggest an independent
analysis for each claim pending. Such an exemplary analysis is reproduced in the claim
chart, which follows (for example if one were to reject Claim 23 under §102 as
anticipated by Gleave):
Claim 23 Elements Rejection
A universal fluid exchanger, comprising: Gleave relates to the exchange of fluid in
the extraction of an analyte while injecting
extraction fluid (col. 2, lines 35-40)
a plurality of reaction vessels; Gleave clearly indicates provision for a
plurality of reaction vessels (elicitation of
an analyte from solution can occur in a
reaction vessel) (see figs 2, 3, 4, and col.
14, line 36 “one or more cells”, col. 14, line
53 “one of cells”)
a reaction vessel support disposed to hold Reaction vessel support 23.
the plurality of reaction vessels in a
preferred orientation;
a plurality of injection ports, each injection There is a plurality of cells present, and
7
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007