Appeal 2007-2807
Reexamination 90/006,511
Patent 5,156,811
not require certainty of success. It is not necessary that one with ordinary
skill in the art would know for sure that a certain result will be achieved.
Note that the patentee does not represent that the inventor did not reasonably
expect success.
The patentee’s argument that Puchinger teaches away from the
claimed invention because it proposes a different solution to the aerosol
contamination problem is misplaced. Puchinger was relied on by the
Examiner only to show that it would have been obvious for one with
ordinary skill to place the filter either in the pipette tip or further up in the
pipette body, and not for any other purpose. The fact that Puchinger
discloses another solution for preventing aerosol contamination in a pipette
does not undermine the Examiner’s rationale in relying on the teachings of
Ferri, Sharpe, and Puchinger. Prior art references need not be applied in a
manner which focuses on the same problem as that with which the inventor
is concerned. See In re Dillon, 919 F.2d at 688,16 USPQ2d at 1901. The
different solution of Puchinger is also not a teaching away from the claimed
invention in the sense of suggesting any inoperability of the patentee’s
solution. Furthermore, as explained above, even the patentee was not
concerned exclusively with the problem of aerosol contamination.
For all of the foregoing reasons, the patentee has not shown error in
the rejection of claims 10-12, 15, 21, 30 and 33.
The patentee notes that all of Group III claims 38-41 recite that “the
pores of the plug member are large enough to allow gas to pass freely
through the plug member.” The patentee’s specification, however, does not
define what “passing freely” means. Under the broadest reasonable
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