Appeal No. 2005-0543 Page 5
Application No. 09/992,221
from the prior art. In making this evaluation, all facts must be considered. The
Patent Office has the initial duty of supplying the factual basis for its rejection. It
may not, because it may doubt that the invention is patentable, resort to
speculation, unfounded assumptions or hindsight reconstruction to supply
deficiencies in its factual basis. To the extent the Patent Office rulings are so
supported, there is no basis for resolving doubts against their correctness.
Likewise, we may not resolve doubts in favor of the Patent Office determination
when there are deficiencies in the record as to the necessary factual bases
supporting its legal conclusion of obviousness.” In re Warner, 379 F.2d 1011,
1017, 154 USPQ 173, 178 (CCPA 1967), cert. denied, 389 U.S. 1057 (1968)
(emphases in original).
The examiner, in the final rejection, stated that the fluorescent method of
Inami, as well as Kim, Hansen and Hoffman was a “functional equivalent” of the
absorbance method of Bentley. See Final Rejection mailed December 24, 2003.
In the Examiner’s Answer, however, the examiner states that
Bentley is not cited for its use of any particular analytical technique
per se. Rather, Bentley is cited for the fact that one practicing the
cited art methods of cell counting and classification, such as
disclosed by Inami [ ], would have recognized the desirability of
classifying the lipid particles so as to ensure an accurate count of
the total amount of cells present in the sample, as well as an
accurate count of the various cell types therein. Thus, even
assuming the techniques of Bentley would not have been
considered equivalent to those of Inami and the other patents, the
artisan of ordinary skill would nevertheless have recognized from
Bentley the importance of classifying lipid particles in a marrow
analysis, so as to ensure an accurate cell count, precisely as
recited in appellants’ claims.
Examiner’s Answer, page 9.
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