Appeal 2007-1824
Application 10/639,718
provides the advantage of a more accurate detection method when detecting
a plurality of analytes, therefore providing the motivation to combine the
teachings of Lahiri and Matray (Answer 6-7). In our opinion, a person of
ordinary skill in the art performing a competitive assay on an array
comprising microspots of different proteins, would have appreciated that
ligands with high affinity for their respective receptor and low cross-
reactivity between receptor types would be advantageous. “The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” KSR Int’l Co.
v. Teleflex Inc., 127 S. Ct. 1727, 1739, 82 USPQ2d 1385, 1395 (2007).
Accordingly, for the reasons set forth above, we are not persuaded by
Appellants’ assertion that a person of ordinary skill in the art would not have
had a reasonable expectation of success in combining the references as relied
upon by the Examiner.
While Appellants focus their attention on assays utilizing GPCRs,
claim 1 is not limited to GPCR assays. In addition, Appellants provide no
evidence to suggest that their arguments relating to GPCR assays are
representative of the entire genus of protein assays encompassed by claim 1.
Stated differently, Appellants’ arguments are not commensurate in scope
with their claimed invention. In re Greenfield, 571 F.2d 1185, 1189, 197
USPQ 227, 230 (CCPA 1978); In re Lindner, 457 F.2d 506, 508, 173 USPQ
356, 358 (CCPA 1972).
On reflection, we find no error in the Examiner’s prima facie case of
obviousness. Accordingly, we affirm the rejection of claim 1 under 35
U.S.C. § 103(a) as unpatentable over the combination of Lahiri, Matray, and
Jordan. Claims 2-15, 18, and 43-51 fall together with claim 1.
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