Ex parte SUN-WING TONG and YI-WEI TANG (BPAI)
In Ex Parte Tong, the Board held that the Examiner had erred in finding specific claims obvious because there must be "a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does." (citing KSR). The claims were as follows:
1. A method of collecting and testing nasopharyngeal
specimens comprising the steps of: 1) positioning the patient
with his or her face pointing upwards, 2) dropping at least a
single drop of a sterile solution into each eye at a time and
then holding head erect and blinking several times, 3)
repeating step 2 until about 2-5mL of solution has been used
up, 4) having the patient spit out the collected fluid in the
back of the throat into a specimen container, and 5) testing
the collected fluid for a disease or disorder selected from the
group consisting of viral upper respiratory infections,
malignancies of the nasal, nasopharyngeal, and
oropharyngeal regions, gene alteration, certain chemicals,
biological abnormalities, and combinations thereof.
5. The method of claim 1, wherein the viral upper
respiratory infection is SARS coronavirus infection,
influenza A virus infection, influenza B virus infection,
parainfluenza virus infection, coronavirus upper respiratory
infection, adenovirus upper respiratory infection, rhinovirus
upper respiratory infection, respiratory syncytial virus
infection, metapneumovirus infection, or other emerging
viral infections.
6. The method of claim 1, wherein the malignancy of the
nasopharyngeal region is nasopharyngeal cancer.
The Board affirmed that claim 1 was obvious because of the use of the term "certain chemicals." The prior art had taught that if you drop chemicals in the eyes they can be collected in the back of the throat. The Board, however, held that claims 5 and 6 were not obvious because the prior art did not suggest to use the collection for a disease or disorder. The Board found that the prior art "provides no reason to instill a sterile solution into patients' eyes in order to test for diseases or disorders such as those found in claims 5 and 6." In KSR, the court noted that an invention "composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art." KSR, 127 S. Ct. at 1741. There must be "a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does." Id.
"The Examiner does not provide a reason to test samples derived from liquid instilled into the lacrimal duct. Rather, the Examiner concludes that "[t]hese specimens can be tested for the presence of virus or cancerous cells"The conclusion that something can be done is not a reason that would have prompted a person of ordinary skill to combine prior art elements."
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