Appeal No. 2001-1412 Paper No. 29
Application No. 08/629,177 Page 7
dissolution. One could forgo this advantage by maintaining only a single compartment for
each reagent.” (answer, p. 14). However, the proposed modification would negate
“applying the ink-jet technique to produce compartments of different immunological
reaction components arranged in alternation and spatially separated, but nevertheless
close together” ... “which [compartmentalization] enables the binding reactions in question
to proceed rapidly and homogeneously with a very small amount of sample and reagent
and a high reaction binding rate” (Deeg, c. 7, ll. 25-29 and 36-39). It would also forgo the
“very short diffusion distances between the reagents contained in different sets of
compartments” which provides the “relatively short reaction times and thorough mixing of
the reagents without special additional measures” in Deeg (c. 4, ll. 6-10). The mere fact
that the prior art may be modified in the manner suggested by the examiner does not make
the modification obvious unless the prior art suggested the desirability of the modification.
In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984) (Although a
prior art device could have been turned upside down, that did not make the modification
obvious unless the prior art fairly suggested the desirability of turning the device upside
down.). Thus, the examiner’s opinion that it would have been obvious to maintain only a
single compartment for each reagent, standing alone, is simply a conclusion without an
evidentiary basis.
Third, neither Rutner nor any of the remaining tertiary references (Freundlich,
Diamandis, Mair, Ohman, Rabitzsch and Xu) make up for the deficiencies of Deeg. The
examiner argues “that larger quantities of reagents could be used in conjunction with a
different solid support known in the prior art, such as a microtiter plate or a test
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