Appeal No. 1996-1618
Application No. 07/876,804
According to the examiner,
[i]n view of the teachings of Katz et al. and Wilchek et al. one of
ordinary skill in the art at the time the invention was made would have been
motivated to and would have found it obvious to have replaced the direct
coupling of binding agents, e.g., antibodies, to surfaces utilized in
immunoassays taught by Bastiaans et al. by replacing the direct coupling of
immunoglobulin with coupling of avidin. [Answer, page 8.]
The examiner relies on “the relatedness of the teachings of the prior art to the
immobilization of reagents on solid-phases, including piezoelectric crystals” (SEA, page
2), a “[g]iven ... interest in exploiting piezoelectric crystals in analyte assays, an interest
clearly apparent from Bastiaans, and in commercializing such assays” (SEA, page 3), and
the “general teachings present” in the prior art (SSEA, page 2).
According to appellants,
Nowhere in the prior art, including the Katz and Bastiaans patents and the
Wilchek reference, is there disclosed or suggested the use of avidin-biotin
technology on a piezoelectric crystal substrate let alone in conjunction with
a coupling layer. [RB, page 11.]
It is insufficient that the prior art discloses the components of the claimed invention,
either separately or in other combinations; there must be some teaching, suggestion, or
incentive to make the combination made by appellants. Interconnect Planning Corp. v.
Feil, 774 F.2d 1132, 1143, 227 USPQ 543, 551 (Fed. Cir. 1988) (insufficient to select
from the prior art the separate components of the inventor's combination, using the
blueprint supplied by the inventor); W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d
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