Appeal No. 2005-0543 Page 4
Application No. 09/992,221
According to the rejection:
Inami, Kim ’037, Hansen and Hoffman demonstrate that the
claimed dyes were all known to the artisan of ordinary skill to be
useful in the analysis of blood cell-containing samples, such as
bone marrow, using the claimed analytical parameters of
fluorescent and light scattering intensity, as recited in the claims
under examination. Inami, Kim ’037, Hansen and Hoffman differ
from the claims under examination in that those patents fail to
disclose the step of classifying the lipid particles present in the
analyzed marrow sample as part of the step of analysis by
fluorescence and scattered light.
Id. at 5-6.
Bentley is the relied upon for “establish[ing] the importance of classifying
the fat particles in a bone marrow sample so that an accurate TNC can be
obtained, by compensating for the amount of lipid particles in the sample.” Id. at
6.
The rejection concludes:
Thus, one of ordinary skill in the art performing the analytical
procedures of Inami, Kim ’037, Hansen and Hoffman would have
been motivated by Bentley to have classified the lipid particles
present in the marrow sample, and thereby obtain a more accurate
cell count. It is proper to combine Inami, Kim ’037, Hansen and
Hoffman with Bentley, because all references are directed to
solving the same problem—obtaining accurate TNC cell counts in
blood cell-containing samples.
Id. at 6.
Appellants argue that “the examiner [has not] explained why the proposed
modification of Bentley in view of any other cited references would have been
desirable.” Appeal Brief, page 8. We agree.
“A rejection based on section 103 clearly must rest on a factual basis, and
these facts must be interpreted without hindsight reconstruction of the invention
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007