Appeal No. 1997-3503
Application No. 08/172,866
It is well-established that before a conclusion of obviousness may be
made based on a combination of references, there must have been a reason,
suggestion or motivation to lead an inventor to combine those references. Pro-
Mold and Tool Co. v. Great Lakes Plastics Inc., 75 F.3d 1568, 1573, 37 USPQ2d
1626, 1629 (Fed. Cir. 1996). On this record, it is our opinion that the examiner
presented the evidence necessary to establish a prima facie case of
obviousness. Accordingly, we affirm the examiner’s rejection of claims 29, 31
and 35-37 under 35 U.S.C. § 103.
Claims 32, 33, 50 and 51:
The examiner argues (Answer, page 6) that the combination of ‘061, ‘622
and Sakuma “do not specify that the magnet is a permanent magnet in the
shape of a flat disk or a needle.” To make up for this deficiency the examiner
applies Forrest to teach (Answer, page 6) “an assembly which is designed for
use with immunoassays utilizing magnetic particles and which allows a
batchwise separation … [t]he magnets are permanently located, remaining fixed
in position in the base of the device throughout the assay.” The examiner further
argues (Answer, page 6) that although Forrest does “not specify that the
magnets could be disc shaped, such a shape would have been obvious to
accomplish the most efficient separation and most defined pattern, particularly in
the case where a tube constitutes the reaction vessel, since a disc would most
closely resemble the shape of the vessel.”
Appellants argue (Brief, page 18) that “the magnet is used in Forrest in
the washing step after the reaction. Further, the reaction system in Forrest is not
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