Ex parte Shively

Board of Patent Appeals and Interferences

Mar 19, 1998

07629690 (B.P.A.I. Mar. 19, 1998)

THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
This opinion (1) was not written for publication and
(2) is not binding precedent of the Board.
Paper No. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JOHN E. SHIVELY
____________
Appeal No. 93-3623
Application 07/629,690
____________
ON BRIEF
____________
Before WINTERS, WILLIAM F. SMITH, and TORCZON, Administrative
Patent Judges.
TORCZON, Administrative Patent Judge.
DECISION ON APPEAL
BACKGROUND
A. The nature of the case
1. This is an appeal under 35 U.S.C. § 134 from the final
rejection of claims 1-15 and 19-25. No other claims are pending.
2. Appellant filed the subject application on 18 December
1990. He claims the benefit under 35 U.S.C. § 120 of the
following United States patent applications: 07/174,956 (filed
29 March 1988, now United States patent 5,061,635, issued 29
October 1991), which was a continuation-in-part of 07/072,754
(filed 13 July 1987, now abandoned), which was a continuation-in-
Appeal No. 93-3623 Page 2
Application 07/629,690
part of 06/896,724 (filed 15 August 1986, now abandoned). The
07/072,754 application was the subject of Ex parte Shively,
Appeal No. 90-2219 (Bd. Pat. App. & Inter. 27 Aug. 1990),
affirmed, Appeal No. 91-1025 (Fed. Cir. 1991) (Fed. Cir. R. 36).
3. Appellant indicates (Paper 18 (App. Brief) at 3) that
the Federal Circuit also reviewed his 06/896,724 application as
part of a consolidated appeal. The record indicates that the
Federal Circuit reviewed the 06/892,579 application, filed
1 August 1986, now abandoned. Ex parte Shively, Appeal
No. 89-2337 (Bd. Pat. App. & Inter. 27 Aug. 1990), affirmed,
Appeal No. 91-1024 (Fed. Cir. 1991) (Fed. Cir. R. 36). Appellant
has not indicated a claim for the benefit of 06/892,579
application in the present application.
4. The present application is a divisional application
from the 07/174,956 application. (Paper 2 (Req. Div. Appl'n.).)
The resulting 5,061,635 patent has method, but not apparatus,
claims.
5. The present application is entitled "Protein or peptide
sequencing method and apparatus". The subject matter of the
invention is reactors for peptide sequenators. (Paper 1 (Spec.)
at 1.)
6. The claims on appeal broadly encompass three distinct
embodiments. Claims 1, 9, and 19 illustrate the first (Fig. 1),
Appeal No. 93-3623 Page 3
Application 07/629,690
The bracketed items appear to be missing from the1
claims.
second (Fig. 10), and third (Figs. 11 & 12) major embodiments,
respectively, that are at issue in this appeal:
1. A continuous flow reactor including a first
tube for passing reactive fluids and solvents from a
peptide sequenator into a reaction chamber packed with
peptide coated discrete objects and a second tube for
removal of solvents and reaction products from the
reaction chamber which comprises:
(A) a reaction chamber formed from a pliable,
chemically inert tube; [and]1
(B) first and second pliable, chemically inert
tubes for connecting the reaction chamber to
a sequenator,
(C) the inside and outside diameters of said
reaction chamber tube and said first and
second connecting tubes being so dimensioned
that two leak-tight interference fit joints
are provided by inserting one end section of
a tube into the end section of another tube,
one of said leak-tight interference fit
joints being provided between said first tube
and said reaction chamber and the other being
provided between said second tube and said
reaction chamber.
9. A continuous flow reactor for a peptide
sequenator comprising:
(A) a cylindrical reaction chamber formed from a
pliable, chemically inert tube; [and]1
(B) first and second pliable, chemically inert
tubes for connecting the cylindrical reaction
chamber to a sequenator,
(C) the inside and outside diameters of said
cylindrical reaction chamber and said first
and second connecting tubes being so
dimensioned that two leak-tight interference
Appeal No. 93-3623 Page 4
Application 07/629,690
fit joints are provided by inserting one end
section of a tube into the end section of
another tube, one of said leak-tight
interference fit joints being provided
between said first tube and said cylindrical
reaction chamber and the other being provided
between said second tube and said cylindrical
reaction chamber[,]1
said cylindrical reaction chamber containing at least
one strip of hydrophobic membrane bearing a peptide
sample, said strip being positioned in said cylindrical
reaction chamber with its longitudinal axis
substantially parallel to the longitudinal axis of said
chamber.
19. A reactor for a protein or peptide sequenator
comprising:
an elongated body member;
a longitudinal passage for the flow of fluids
through said body member;
at least one end of said passage having a convex
surface to receive a cap member having a concave outer
surface;
the inner wall of a central portion of said
passage being raised, whereby the diameter of said
passage in said portion is reduced; and
shoulders at one end of said raised portion in
said passage to abut the end of an inlet or outlet tube
carried by said cap member.
7. Although Appellant states that claims 1-15, 19, and 20
are "the same or substantially the same as the claims at issue on
the consolidated Federal Circuit appeals" (Paper 18 at 3), the
second (claims 9-15) and third (claims 19 and 20) embodiments
first appeared in his later 07/174,956 application. Applicant
Appeal No. 93-3623 Page 5
Application 07/629,690
added claims 21-25, which correspond to the first embodiment, by
amendment to the present application. (Paper 5 (Amdt. B).)
B. The rejection
8. The examiner relied on statements about the prior art
in the specification and the following references in rejecting
the claims under 35 U.S.C. § 103 (Paper 16 (Final Rej.) at 2-7):
Winter et al. (Winter) 3,346,486 10 Oct. 1967
Hrdina 3,615,235 26 Oct. 1971
Johnson 4,180,383 25 Dec. 1979
Leaback 4,276,048 30 June 1981
Hara 4,289,620 15 Sep. 1981
Urdea et al. (Urdea) 4,483,964 20 Nov. 1984
Hood et al. (Hood) 4,603,114 29 July 1986
and
Aebersold et al., "Electroblotting onto Activated Glass", 261 J.
Biol. Chem. 4229, 4230 (25 Mar. 1986) (Aebersold).
Appeal No. 93-3623 Page 6
Application 07/629,690
9. Specifically, the examiner rejected:
Claims in view of Combination
1-3, 6-8, and 21-25 Hrdina and Winter, Leaback, or
Hara
4 and 5 Winter, Hrdina, Johnson,
Leaback, Hara, and Hood
9, 10, and 12-15 Winter, Leaback, Hara, and
Hood
11 Winter, Leaback, Hara, Hood,
and Aebersold
19 and 20 Winter, Hrdina, and Hara
1-8 and 21-25 Urdea, admitted prior art, and
Winter, Hrdina, Leaback, or
Hara
10. The examiner has apparently withdrawn her rejection
under 35 U.S.C. § 112 (Paper 16 at 2) in light of an after-final
amendment (Paper 19 at 1). (Cf. Paper 21 (Ex. Ans.) at 2-3.)
11. Appellant argues the claims in the following groups:
I - 1-3, 6-8, 21-25 (first embodiment); II - 4 and 5 (dependent
from the first embodiment); III - 9-15 (second embodiment); and
IV - 19 and 20 (third embodiment). (Paper 18 at 6.)
FINDINGS OF FACT
A. Protein sequencing
1. Claim 1 requires
A continuous flow reactor including a first tube for passing
reactive fluids and solvents from a peptide sequenator into a
reaction chamber . . . and a second tube for removal of solvents
and reaction products from the reaction chamber which comprises:
Appeal No. 93-3623 Page 7
Application 07/629,690
(A) a reaction chamber formed from a pliable,
chemically inert tube; [and]
(B) first and second pliable, chemically inert
tubes for connecting the reaction chamber to
a sequenator[.]
Hrdina
2. Hrdina's field of invention is a flow-through reactor
that would be useful for amino acid analysis. (1:1-51.)
3. Appellant declares that "[t]he Hrdina reactor would not
be practically useful for protein sequencing". (Decl. I at
¶ 20.)
4. Appellant knew, or should have known, based on a fair
reading of Hrdina, particularly in view of the previous Board
decision (Appeal No. 90-2219 at 4), that Hrdina is directed to
reactors for amino acid analysis.
5. Although Appellant provides reasons why Hrdina's seals
create problems, he also notes that Hrdina suggests omission of
those seals. (Decl. I at ¶ 12(i).)
6. We find, on balance, that Appellant's declaration
evidence is inconsistent with, and less credible than, the
express teachings of Hrdina itself for understanding what Hrdina
would have meant to a person having ordinary skill in the art.
7. We find that Hrdina is an appropriate reference in the
field of Appellant's endeavor: continuous-flow reactors for
protein or peptide analysis.
Appeal No. 93-3623 Page 8
Application 07/629,690
Urdea
8. Urdea teaches a reactor system for degrading linear
polymers (Abstract), including proteins (3:39-46).
9. Appellant declares that "[t]he device, as disclosed in
the Urdea patent, is not useful for the sequencing of proteins."
10. Appellant knew, or should have known, base on a fair
reading of Urdea, that it teaches or suggests reactors for
degradation of polypeptides.
11. Appellant provides no objective basis for us to
evaluate his contention that "Urdea apparently was dismissed by
persons skilled in the protein sequencing art." (Decl. I at
¶ 11(ii)(c).)
12. To the extent that Appellant is urging that Urdea is
not an enabling reference (Decl. I at ¶ 11(ii)(c)), we note that
patent disclosures are not required to be production
specifications. Northern Telecom, Inc. v. Datapoint Corp.,
908 F.2d 931, 941, 15 USPQ2d 1321, 1329 (Fed. Cir. 1990). We
further note that patents are presumed to be enabling. 35 U.S.C.
§ 282. Appellant provides no objective evidence that one skilled
in the art would not, at the time of his invention, have been
able to analyze peptides using an apparatus suggested by Urdea's
disclosure.
13. On balance, we find that Appellant's declaration
evidence is inconsistent with, and less credible than, the
Appeal No. 93-3623 Page 9
Application 07/629,690
express teachings of Urdea itself for understanding what Urdea
would have meant to a person having ordinary skill in the art.
14. We find that Urdea is an appropriate reference in the
field of Appellant's endeavor: continuous-flow reactors for
protein or peptide analysis.
15. We further find that, to the extent that either Hrdina
or Urdea alone might not independently teach or suggest a
continuous-flow reactor for protein or peptide sequencing,
together they provide a foundational teaching in the field of
continuous-flow reactors for protein or peptide analysis.
B. Leak-tight interference fit joints
16. Claim 1 further requires
the inside and outside diameters of said reaction
chamber tube and said first and second connecting tubes
being so dimensioned that two leak-tight interference
fit joints are provided by inserting one end section of
a tube into the end section of another tube, one of
said leak-tight interference fit joints being provided
between said first tube and said reaction chamber and
the other being provided between said second tube and
said reaction chamber.
Appellant's disclosure
17. Appellant discloses that leak-proof joints are the
result of interference or press fits between supply/drain tubes
12/16 and a reaction tube 14, with a specified size relationship.
(Paper 1 at 6.) The disclosed relationship is a 1:2 ratio in
outer diameter, where the inner diameter of the reaction tube is
almost as large the supply/drain tubes' outer diameter. (Paper 1
Appeal No. 93-3623 Page 10
Application 07/629,690
at 5-6.) The relationship between the drain and reactor tubes
may be reversed to provide a "reaction zone free of unswept
volumes". (Paper 1 at 6.)
18. Appellant discloses a reaction tube 14 with an inner
diameter of / inch (approximately 1.6 mm). (Paper 1 at 5-6.)116
Hrdina
19. Hrdina notes that an essential feature of the flow-
through reactors of automated amino acid analyzers is a thin
capillary tube, preferably made of polytetrafluoroethylene (PTFE,
e.g., TEFLON ). (1:44-51.)®
Urdea
20. Urdea uses a glass reactor, but notes that reactor
structural material is not critical as long as it is inert.
(4:44-46.)
21. Urdea further teaches that PTFE is inert and that it
may be used for other components, including the tubes 26, 28 into
and out of the reactor 12. (5:50-60.)
22. We find that, taken as a whole, Urdea would have
reasonably suggested an all-PTFE construction.
Leaback
23. Leaback teaches the use of a non-wettable (e.g., PTFE)
inlet tube for an inert reaction chamber (1:66-2:12) for use in
microvolume biochemical assays involving enzyme (protein) bearing
substrates and related reactions (1:8-16 & 31-38).
Appeal No. 93-3623 Page 11
Application 07/629,690
24. We find Leaback's problem to be sufficiently related to
the problem facing Appellant (microvolume sequencing of peptides)
to be relevant to a person having ordinary skill in the art.
25. Leaback states that a wettable material for the
reaction chamber is preferable (2:8-12), but also teaches that
the chamber may be integrally formed with the inlet tube,
suggesting that they may be formed of the same material. (2:45-
48.) The outlet tube may be the same material as the inlet or
reactor tubes. (2:36-39.)
26. We find that Leaback, taken as a whole, would have
reasonably suggested an all-PTFE construction.
27. Leaback teaches that proper mixing and flow (and hence
avoidance of unswept volumes) is, in part, a function of reactor
diameter. (2:17-25.) It discloses a reactor with an inner
diameter of approximately 1.6 mm. The inlet tube has half that
inner diameter. (2:26-30.) The outlet tube may be coaxial with
the reactor and the same size as the inlet tube. (2:33-39.)
28. We find that Leaback discloses the same structural and
size relationship that Appellant is claiming, but the materials
of the inlet and reactor tubes are different and their joint is
secured with an adhesive. (6:14-27; Fig. 1.)
29. Leaback teaches the importance of fluid-tight seals in
microvolume reactions. (2:48-53.)
Appeal No. 93-3623 Page 12
Application 07/629,690
Winter
30. We note that Winter teaches the desirability of fluid-
tight joints (2:12-53) in an apparatus for the cyclical analysis
of peptides (1:11-70).
Admitted prior art
31. Applicant's admitted prior art, specifically D.H.
Hawke et al., "Microsequence Analysis of Peptides and Proteins",
147 Analytical Biochemistry 315, 329 (June 1985), "noting that
Teflon[ ] is 'self-sealing', report[s] lower background levels®
and increased yields deemed to be consequent from a better seal
achieved in the all Teflon[ ] design as compared to the seal®
observed with the Hewick glass cartridge." (Paper 1 at 2-3.)
32. We find that the admitted prior art would have provided
the motivation to use the all-PTFE constructions suggested in the
other references, and that a person having ordinary skill in the
art would have understood that such a construction would have
been "self-sealing", obviating the need for additional seals or
adhesives.
33. We find that Appellant's declaration regarding his
comparative data with Hawke and the "best prior art" (Decl. I at
¶¶ 9-11) unpersuasive. Appellant states that "the Teflon[ ]®
version of the Hood cartridge reactor [used in Hawke] was the
most advanced sequencer reactor extant [and] represents the best
prior art available at the time the invention of claims 1-12 was
Appeal No. 93-3623 Page 13
Application 07/629,690
made." (Id. at ¶ 11(ii)(a), emphasis added.) The best extant
design Appellant knows of is not necessarily the same thing as
the closest prior art. In the present case, the closest prior
art is a combination of the all-PTFE reactor elements with the
cylindrical/capillary designs of Urdea/Hrdina/Leaback. The
declarations do not address this combination. See In re Baxter
Travenol Labs., 952 F.2d 388, 392, 21 USPQ2d 1281, 1285 (Fed.
Cir. 1991) (Comparison must be with the closest configuration of
the prior art).
Teachings of the art taken as a whole
34. We find that cited references and the admitted prior
art, taken as a whole, would have provided motivation to a person
having ordinary skill in the art to use an all-PTFE design to
overcome any problems with seals between PTFE and non-PTFE
components.
35. We further find that the resulting self-sealing PTFE
joints would have been considered as leak-tight (Paper 1 at 2-3)
and would obviate the need for washers, collars, adhesives, etc.
C. Discrete objects
36. Claim 1 requires "a reaction chamber packed with
peptide coated discrete objects".
37. Claim 4 further requires that "the peptide coated
discrete objects with which the reaction chamber is packed
Appeal No. 93-3623 Page 14
Application 07/629,690
comprise peptide coated porous silica objects." (Emphasis
added.)
Hrdina
38. Hrdina teaches the use of porous, inert particles for
packing the reactor of an amino acid analyzer. (2:27-35.)
Urdea
39. Urdea teaches the use of solid-phase supports for
polypeptides in the reaction chamber, specifically beads or
particles. Such supports should be porous and chemically inert.
Urdea specifically teaches the use of silica beads (e.g.,
Fractosil ) as the preferred support. (4:60-5:9.)®
Johnson
40. Alternatively, we further note the teachings of, e.g.,
Johnson that discrete, amorphous silica microparticles are a
conventional support for peptides. (6:43-7:2.) Johnson also
teaches coating the silica particulate substrate with protein.
(7:28-39.) We recognize that Johnson is not directed to a
peptide sequencing per se, but it is directed to selective
binding and elution in a continuous-flow reactor and is thus
sufficiently related to the problem facing the inventor to be
instructive to a person having ordinary skill in the art.
41. We find that Appellant provides no basis for us to
evaluate his declaration that Johnson is not analogous. (Decl. I
at ¶ 12(ii).) As explained in the preceding paragraph, Johnson
Appeal No. 93-3623 Page 15
Application 07/629,690
meets at least the second, alternative, basis for finding
analogousness. In re Deminski, 796 F.2d 436, 442, 230 USPQ 313,
315 (Fed. Cir. 1986). On balance, we find Appellant's conclusory
statement to be unpersuasive.
Teachings of the art as a whole
42. We find that Urdea alone or in view of Hrdina or
Johnson would have taught a person having ordinary skill in the
art the use of peptide-coated discrete particles, preferably made
of silica, as the solid-phase support in a reactor.
D. Longitudinal, hydrophobic membrane
43. Claim 9 (the second contested embodiment, Fig. 10)
requires
at least one strip of hydrophobic membrane bearing a
peptide sample, said strip being positioned in said
cylindrical reaction chamber with its longitudinal axis
substantially parallel to the longitudinal axis of said
chamber.
44. Hood is directed to an apparatus for the sequential
degradation of peptides. (1:11-16.) It teaches the use of a
solid matrix to support the sample. (7:16-26.) The matrix may
be a thin film on the walls of the reaction chamber (Fig. 18A) or
a porous sheet mounted transversely across the chamber (Fig. 6A).
(7:27-33.)
Appeal No. 93-3623 Page 16
Application 07/629,690
45. Hood's thin-film embodiment is essentially longitudinal
with the flow of reactants through the reaction chamber. (26:24-
28.)
46. The porous sheet is made of a compressed fibrous
material such as glass. (24:23-25.)
47. The record is not clear about whether porous glass
would have been considered hydrophobic.
48. We find that Hood does not teach or suggest orienting
the hydrophobic membrane longitudinally. Hood describes the
porous sheet as a "filter". (24:25-28.) We find insufficient
motivation to reorient Hood's transverse filter to become a
longitudinal substrate.
49. The examiner has provided no guidance on, and we do not
see, how Hara, Winter, and Leaback might supply the teachings or
suggestions missing in Hood.
E. Contoured cap and passage
50. Independent claim 19 (the third contested embodiment,
Figs. 11 & 12) requires
at least one end of said passage having a convex
surface to receive a cap member having a concave outer
surface;
the inner wall of a central portion of said
passage being raised, whereby the diameter of said
passage in said portion is reduced; and
shoulders at one end of said raised portion in
said passage to abut the end of an inlet or outlet tube
carried by said cap member.
Appeal No. 93-3623 Page 17
Application 07/629,690
Hara
51. Hara teaches the use of a "column end fitting plug."
(2:35-36.)
Winter
52. Winter teaches threaded plugs 34 & 42. (2:29-32
& 45-47.)
Hrdina
53. Hrdina does not add any relevant teachings or
suggestions directed to the excerpted limitations.
The teachings of the art as a whole
54. We find that Hrdina, Winter, and Hara do not provide
sufficient guidance from which a person having ordinary skill in
the art could reasonably "determine the most appropriate cap
attachment means" (Paper 21 at 12) and come up with the
structural features recited in claim 19.
F. Additional findings
55. We find, based on the references, most of which are
assigned to, or otherwise appear to originate from, academic
research institutions, that the level of skill in the art is
quite high. In re GPAC Inc., 57 F.3d 1573, 1579, 35 USPQ2d 1116,
1121 (Fed. Cir. 1995).
56. To the extent that Appellant is urging that his results
are unexpectedly good, we find that his arguments and evidence of
record neither substantially support that finding nor
Appeal No. 93-3623 Page 18
Application 07/629,690
specifically urge that finding with regard to the closest prior
art. In re Geisler, 116 F.3d 1465, 1470-71, 43 USPQ2d 1362, 1366
(Fed. Cir. 1997).
CONCLUSIONS OF LAW
A. Weight of evidence
1. A conclusion of obviousness must be based on a
preponderance of evidence, with due consideration for the weight
of the evidence and the persuasiveness of the argument. In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992).
2. Declaration evidence must be evaluated as part of the
totality of evidence. Baxter Int'l Inc. v. Cobe Labs., 88 F.3d
1054, 1058, 39 USPQ2d 1437, 1441 (Fed. Cir. 1996). Declarations
unsupported by objective evidence may be accorded little or no
weight. In re Etter, 756 F.2d 852, 860, 225 USPQ 1, 6 (Fed. Cir.
1985). A declaration and its support must be relevant to the
question at hand. Schendel v. Curtis, 83 F.3d 1399, 1403,
38 USPQ2d 1743, 1746 (Fed. Cir. 1996)
3. The relationship between the declarant and the inventor
is relevant in determining the weight to be accorded the
affidavit. Refac Int'l, Ltd. v. Lotus Dev. Corp., 81 F.3d 1576,
1581-82, 38 USPQ2d 1665, 1669 (Fed. Cir. 1996). Indeed, an
inventor is presumed to support the patentability of the claimed
invention to the extent that the absence of favorable inventor
Appeal No. 93-3623 Page 19
Application 07/629,690
testimony, in some circumstances, may even be counted against the
inventor. Borror v. Herz, 666 F.2d 569, 573-74, 213 USPQ 19, 23
(CCPA 1981).
4. Appellant's "opinion" concluding that omission of the
seals from Hrdina would not, by itself, have rendered the claims
1-12 (and presumably 13-15 and 21-25) obvious, is not a proper
use of fact testimony. E.g., In re Buchner, 929 F.2d 660, 661,
18 USPQ2d 1331, 1332 (Fed. Cir. 1991) (dismissing unsupported
"expert opinion" on an ultimate issue).
5. Appellant's analysis of the separate deficiencies of
each reference (see, e.g., the preceding paragraph) and the
admitted prior art is not proper approach to contesting an
obviousness rejection involving a combination of references.
In re Merck & Co., 800 F.2d 1091, 1097, 231 USPQ 375, 380 (Fed.
Cir. 1986).
6. The examiner must be careful in relying on ordinary
skill in the art to arrive at specific limitations in the absence
of some teaching or suggestion at least implicit in the art of
record. Otherwise, as with claims 9-15, 19 and 20, the rejection
will appear to depend on improper hindsight. W.L. Gore & Assocs.
v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed.
Cir. 1983).
Appeal No. 93-3623 Page 20
Application 07/629,690
B. Analogousness
7. To be relevant in an obviousness rejection, a reference
must either be in the field of the applicant's endeavor or, if
not, then be reasonably pertinent to the particular problem with
which the applicant was concerned. In re Deminski, 796 F.2d 436,
442, 230 USPQ 313, 315 (Fed. Cir. 1986). Thus, it is not
sufficient for Appellant to observe that a reference is not
directed to peptide sequencing (even where the observation is
true), when all of the references are directed to microvolume
analysis of biochemicals in a reactor, generally involving
peptides and substrates. Prior art is relevant for all it fairly
teaches even if directed to a somewhat different problem. In re
Napier, 55 F.3d 610, 614, 34 USPQ2d 1782, 1785 (Fed. Cir. 1995).
C. Claim interpretation
8. We must interpret claims as broadly as their terms
reasonably allow in light of the specification. In re Zletz,
893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989).
9. Claim 1 does not exclude the additional use of
adhesives, plugs, or seals to secure the interference fit.
10. Claim 1 does not require the reactor to be free of
unswept volumes. Both the specification (Paper 1 at 6) and
dependent claim 8 associate this advantage with a specific
arrangement. Cf. 35 U.S.C. § 112[4] (requiring dependent claims
to specify a further limitation of the claimed subject matter).
Appeal No. 93-3623 Page 21
Application 07/629,690
11. Patentability cannot be predicated on unclaimed
features. In re Schreiber, 128 F.3d 1473, 1479, 44 USPQ2d 1429,
1433 (Fed. Cir. 1997).
D. Obviousness
12. After considering the combined teachings of the
admitted prior art, Urdea, and Hara, Winter, Hrdina, or Leaback,
we conclude that the subject matter of claims 1 and 4, repre-
senting Appellant's separately argued groups I and II, would have
been obvious to a person having ordinary skill in the art at the
time of Appellant's invention. Thus, we affirm the examiner's
sixth rejection covering claims 1-8 and 21-25.
13. In light of our conclusion regarding the sixth
rejection, we need not reach the first and second rejections
covering the same claims. We note, however, our reliance on the
admitted prior in reaching our conclusion.
14. We conclude that claims 9-15 would not have been
obvious based on Hood, Hara, Winter, and Leaback. Consequently,
we reverse the examiner's third and fourth rejections.
15. We conclude that claims 19 and 20 would not have been
obvious based on Hrdina, Winter and Hara. We, therefore, reverse
the examiner's fifth rejection.
Appeal No. 93-3623 Page 22
Application 07/629,690
DECISION
We affirm the rejection of claims 1-8 and 21-25. We reverse
the rejections of claims 9-15, 19 and 20.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a). See 37 CFR § 1.136(b).
AFFIRMED-IN-PART
SHERMAN D. WINTERS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
WILLIAM F. SMITH ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
RICHARD TORCZON )
Administrative Patent Judge )
Appeal No. 93-3623 Page 23
Application 07/629,690
Edward S. Irons
Columbia Square
Suite 301 East Tower
555 Thirteenth Street, N.W.
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