Appeal 2007-2807
Reexamination 90/006,511
Patent 5,156,811
with ordinary skill in the art is presumed to be skilled and would know that
whatever material Ferri uses for its filter which becomes impervious to gas
and liquid when contacted by liquid is pertinent to the problem of having a
wicking barrier that passes fluid in a pipette when contacted by a liquid. The
patentee’s arguments focusing exclusively on the aerosol contamination
problem is misplaced. We need not and do not reach the issue of whether
Ferri is reasonably pertinent to the aerosol contamination problem.
The patentee asserts that the teachings of the three references Ferri,
Sharpe, and Puchinger should have been combined by the Examiner in a
different way, different from the way the Examiner made the combination,
and further asserts that the resulting combination cannot properly be made to
arrive at the patentee’s claimed invention. (Brief 21-22). The argument is
misplaced, and, to quote Judge Dyk, In re Trans Texas Holdings Corp., Nos
2006-1599, -1600, slip op. at 11 (Fed, Cir. Aug. 22, 2007), "simply makes
no sense." It is tantamount to saying that the Examiner should have taken a
position which according to the patentee is unsupportable. The short answer
to the assertion is that the Examiner did not take the approach which
according to the patentee is unsupportable. It is manifestly not subject to
reasonable dispute that the patentee has to demonstrate error in the position
the Examiner did take, and not in a phantom position which the Examiner
did not take. Furthermore, the fact that the patentee might have arrived at
the claimed invention in a particular manner, i.e., first looking at pipette tips,
then realizing their deficiencies in preventing aerosol contamination, and
then finding the appropriate plug material to cure such deficiencies, does not
mean one with ordinary skill in the art is limited to that particular path in
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