Appeal 2007-0393
Reexamination Control 90/006,786
Patent 6,497,843
1 Our conclusion of obviousness is consistent with Patentee’s own
2 characterization and treatment of the subject matter during the prosecution
3 of the application which issued as the 843 patent. Patentee filed the
4 application under the provisions of 37 CFR § 1.53(b) characterizing it as a
5 continuation of Application 09/192,969. That application issued as the 620
6 patent. See Application 10/091,162, Transmittal Letter filed March 4, 2002.
7 A “continuation” is a term of art in patent prosecution. The word refers to a
8 second application for the same invention claimed in a prior nonprovisional
9 application and filed before the original prior application becomes
10 abandoned or patented. Patentee’s characterization of the application as a
11 “continuation” is not inconsistent with our conclusion that the subject matter
12 of Claim 1 is patentably indistinct from the subject matter of Claims 4 and 6
13 of the 620 patent. Additionally, Patentee voluntarily submitted a terminal
14 disclaimer, prior to any examination by a patent examiner. Such action is
15 also not inconsistent with our conclusion that the subject matter of the two
16 patents is not patentably distinct.
17 Patentee argues that the wicking configurations in the 620 and 843
18 patents are not art recognized equivalents and therefore are not obvious. The
19 Examiner’s Answer does not rely on this rationale, nor do we. We base our
20 affirmance on the understanding one skilled in the art would have of the
21 scientific principles and concepts which govern how the processes claimed
22 in the 620 and 843 patents work. That knowledge includes an understanding
23 of the capillary action which causes the urine to move up the wicking means.
24 From that we infer that the person of ordinary skill in the art would have
25 expected that the method would work for its intended purpose as long as the
26 urine wicked into contact with the assay strip. In other words, the difference
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