Appeal No. 2001-1412 Paper No. 29
Application No. 08/629,177 Page 8
tube which also reads on a reaction well and is specifically taught by Rutner...” (answer, pp.
13-14). However, while each of Rutner and the tertiary references disclose one or more
individual part(s) of the claimed invention, there must be some motivation, suggestion or
teaching of the desirability of making the specific combination that is claimed by
appellants. For example, the examiner has not explained what motivation the ordinary
artisan would have had to use an ink-jet in conjunction with a test tube as described by
Rutner instead of in conjunction with a plastic carrier sheet as described by Deeg.
Furthermore, as noted by the examiner (answer, p. 13), the claimed invention is not limited
to specific quantities of sample [or reagents] and the examiner has not pointed to evidence
of advantages associated with using “larger quantities of reagents.”
Therefore, based on this record, we conclude that the examiner has not established
a prima facie case of obviousness and reverse the rejections of claims 1-4, 7-17 and 20-
54 under 35 U.S.C. § 103(a) over Deeg in view of Rutner alone and/or further in view of
Freundlich, Ohman, Mair, Rabitzsch, Diamandis and/or Xu.
OTHER MATTERS
Both of appellants’ device claims (15 and 40) recite an analyte specific component
immobilized on the surface of the reaction well, “either directly or via secondary
immobilizing reagents.” Appellants’ method claims on the other hand all recite an analyte
specific component immobilized “directly on a reaction well” or “on a solid phase attached
to a reaction well.” Upon return of this application to the jurisdiction of the examiner, the
examiner should consider whether “secondary immobilizing reagents” and “a solid phase
attached to a reaction well” are equivalent
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