Appeal No. 2007-0056 Page 7
Application No. 09/906,511
method provided high resolution measurement of sub-micrometer and
micrometer particle distribution.” Id. Accordingly, the examiner concludes that a
person of ordinary skill in the art “would have been motivated to employ PIDS
particles analysis to obtain the more sensitive particle discrimination/
measurement of smaller sized particle aggregates therein generating much more
accurate data for further evaluation of the analyte.” Id.
Appellants disagree with the examiner’s reasoning, asserting instead that
[s]ince the ‘714 patent requires measuring and subtracting size
distribution of spurious particles while the PIDS technology does
not, the replacement of the 3-step measurement of size distribution
disclosed in the ‘714 patent with the PIDS technology would
change the principle of operation of the method disclosed in the
‘714 patent. Thus, the teachings of the cited references are not
sufficient to render the claimed invention prima facie obvious.
Brief, page 6. We disagree. This is not a situation where the combined
references require a substantial reconstruction and redesign of Kosako’s
elements, or a change in the basic principle upon which Kosako’s method is
based. Cf. In re Ratti, 270 F.2d 810, 813, 123 USPQ 349, 352 (CCPA 1959). To
the contrary, the combination simply motivates a person of ordinary skill in the art
to replace one particle analysis technique with another “improved” particle
analysis technique. While Kosako exemplifies one particle analysis technique,
the patent is not locked into one specific technique. Instead, Kosako directs a
person of ordinary skill in the art to use “any suitable hardware, software, or
combination thereof.” Kosako, column 3, lines 42-48.
According to appellants (Brief, page 5), the PIDS technique taught by ‘211
and ‘978 “does not involve measuring size distribution of spurious particles at all.
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: September 9, 2013