Appeal No. 2007-0056 Page 10
Application No. 09/906,511
Appellants have not established that there is a difference between their results
and the results obtained through the combination of prior art relied upon. In
addition, assuming arguendo, that there was a difference, appellants have not
established that any such difference would not have been expected by one skill
in the art at the time of the invention. Appellants simply state that PIDS is more
sensitive than “conventional light-scattering methods.” However, as appellants
recognize, the prior art, specifically ‘221, discloses the advantage of using PIDS
in particle analysis. Specifically, appellants assert (Brief, page 6) that ‘221
discloses that “[t]he size discrimination is improved . . . by detecting light
scattering at two or more selected scattering angles (column 6, lines 3-27). The
improved system has an advantage of enhanced discrimination in rejecting
effects of particles outside the desired measurement range (column 16,
line 66 – column 17, line 1). Accordingly, we are not persuaded by appellants’
assertion of unexpected results.
On reflection, we find no error in the examiner’s prima facie case of
obviousness. Accordingly, the evidentiary burden was properly shifted to
appellants. For the foregoing reasons, we find that appellants failed to carry their
burden. Therefore we affirm the rejection of claim 1 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Kosako, ‘221, and ‘978. As set forth
above, claims 2 and 14 fall together with claim 1.
The combination of Kosako, ‘221, ‘978 and Chandler:
Claims 3-6 stand rejected under 35 U.S.C. § 103(a) as being unpatentable
over the combination of Kosako, ‘221, ‘978 and Chandler. Appellants do not
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