Ex Parte Brown et al - Page 10

                Appeal 2007-2955                                                                              
                Application 10/190,425                                                                        

                used only “in the context of a protein-binding assay” (Appeal Br. 11), rather                 
                than “the capture and analysis of cells, living or dead” (id.).  Finally,                     
                Appellants acknowledge that Taylor describes micro-arrays of living cells,                    
                but argue that Taylor’s “micropatterning methods . . . involve considerable                   
                chemical modifications [of a substrate], including cross-linking, coatings of                 
                first hydrophilic then hydrophobic substances, and other steps” (id.), which                  
                “[o]ne of skill in the art will recognize . . . cannot be conducted on a                      
                hydrogel-coated surface” (Appeal Br. 11).  Thus, Appellants argue,                            
                “combination of the substrate of Taylor with [Wagner’s] hydrogel coating                      
                would result in an inoperable reference” (id. at 12).                                         
                      These arguments do not persuade us that the Examiner’s rejection                        
                should be reversed.  The question of obviousness is resolved on the basis of                  
                underlying factual determinations including: (1) the scope and content of the                 
                prior art; (2) the level of ordinary skill in the art; (3) the differences between            
                the claimed invention and the prior art; and (4) secondary considerations of                  
                nonobviousness, if any.  Graham v. John Deere Co., 383 U.S. 1, 17, 148                        
                USPQ 459, 467 (1966).  The Supreme Court has recently emphasized that                         
                “the [obviousness] analysis need not seek out precise teachings directed to                   
                the specific subject matter of the challenged claim, for a court can take                     
                account of the inferences and creative steps that a person of ordinary skill in               
                the art would employ.” KSR Int’l v. Teleflex Inc., 127 S. Ct. 1727, 1741, 82                  
                USPQ2d 1385, 1396 (2007).  “Often, it will be necessary for a court to look                   
                to interrelated teachings of multiple patents; the effects of demands known                   
                to the design community or present in the marketplace; and the background                     
                knowledge possessed by a person having ordinary skill in the art, all in order                


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