Appeal No. 2006-2699
Application No. 09/915,494
the instant claims, it is inherent that the device and valve would be capable
of being inoperable after a first actuation.” (Id. at 10.)
Appellant argues that Cui does not disclose a device comprising a
valve that is “inoperable after a first actuation.” (Br. 7. In particular,
Appellant argues that “this limitation is not a mere recitation of intended use
. . . , but represents a specific characteristic of the claimed invention and a
genuine required limitation of the claim that must be evaluated with every
other limitation – the claim requires that the valve be inoperable after a first
actuation.” (Br. 7.)
We agree with Appellant that the recitation that the valve is
“inoperable after a first actuation” is not merely a recitation of intended use.
Instead, this recitation limits the valve to one having a structure that cannot
transport a second aliquot of specimen from the chamber to the reservoir. In
addition, we agree with Appellant that the Examiner has not set forth a
prima facie case that Cui describes a device having such a valve. Thus, the
Examiner has not demonstrated that Cui anticipates claim 74. We therefore
reverse the § 102(e) rejection of claims 74, 75, 79, 85-92, and 94-102.
3. OBVIOUSNESS
Claims 76-78, 80-84, and 93 stand rejected under 35 U.S.C. § 103 as
follows: claim 76 as obvious over Cui in view of Nelson,2 claims 77 and 78
as obvious over Cui in view of Alley,3 claims 80 and 84 as obvious over Cui
2 Nelson, U.S. Patent No. 5,115,934, issued May 26, 1992.
3 Alley, U.S. Patent Publication No. 2002/0046614 A1, published April 25,
2002.
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