Appeal No. 2001-1431
Application No. 07/968,553
The examiner also states that both Ellis and Schwartz “are directed toward
the detection and/or quantitation of an analyte [and] both use a labeling system
for the detection of said analyte.” The examiner has not adequately explained,
however, how these similarities would have motivated those skilled in the art to
apply the positive and negative calibrators of Ellis to the flow cytometry technique
of Schwartz.
Finally, the examiner has asserted that “the level of skill for an ordinary
artisan in the field of flow cytometry is high, and an ordinary skill artisan in this
field would have known that conventional use of positive and negative samples to
determine a cut-off point is applicable in a variety of assays.” Examiner’s
Answer, page 8. However, a high level of skill in the art cannot be relied on to
supply a motivation missing from the prior art. See In re Rouffet, 149 F.3d 1350,
1359, 47 USPQ2d 1453, 1459 (Fed. Cir. 1998) (“While the skill level is a
component of the inquiry for a suggestion to combine, a lofty level of skill alone
does not suffice to supply a motivation to combine. . . . Even when the level of
skill in the art is high, the [examiner] must identify specifically the principle,
known to one of ordinary skill, that suggests the claimed combination.”).
Thus, we conclude that the cited references do not provide the required
“reason, suggestion, or motivation” to combine their respective teachings. Where
the prior art does not provide motivation to combine the teachings of the cited
references, rejection for obviousness is improper. Since all of the rejections on
appeal rely on the combination of Schwartz and Ellis, we reverse all of the
rejections under 35 U.S.C. § 103.
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