Appeal No. 2003-1783
Application No. 09/560,472
biosensing or analytical devices. The examiner addresses this argument indicating that
the microscope slides disclosed in Humphries are analytical in nature. Answer, page 7.
In addition, Humphries discloses the coating of stainless steel discs. The amount of
bacteria which adhered to the discs was determined by computerized image analysis.
Humphries, page 300. Thus, the stainless steel discs for computerized image analysis
and microscope slides described in Humphries would reasonably appear to be
analytical devices for the specific detection of biologically or medically relevant
molecules in congruence with the definition of analytical device in appellants’
specification, page 47.
Appellants also argue that “Humphries does not provide any teaching regarding
methods of reducing nonspecific adsorption of inorganic ions, peptides, proteins, and
saccharides.” Brief, page 12. The examiner responds, arguing that because this
language is present in the preamble of the claim that it is not given patentable weight
because the process steps or structural limitations are able to stand alone, citing Kropa
v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951). Answer, page 8. The
examiner also argues that “Applicant’s [sic] intended use would be an inherent function
of the Humphries method, since the reference teaches all the steps of the claimed
method and would be capable of performing this function.” Id.
“If the claim preamble, when read in the context of the entire claim, recites
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