Appeal No. 2001-0692 Page 12
Application No. 09/163,572
use in treating atherosclerosis. See column 8, lines 35-50 and column 3, lines
43-52.
Other than the use of 96-well microtiter plates, the assays appear to have
nothing in common. The examiner has provided no evidence or scientific
reasoning to show “that ‘a skilled artisan, confronted with the same problems as
the inventor and with no knowledge of the claimed invention, would select the
elements from the cited prior art references for combination in the manner
claimed.’” Ecolochem, 227 F.3d at 1375, 56 USPQ2d at 1075.
Since the examiner has not shown that the cited references would have
suggested the instant claims to a person of ordinary skill in the art, the rejection
under 35 U.S.C. § 103 is reversed.
Other Issues
The examiner rejected claims 14-17, 32, and 33 only for obviousness over
Evans and Pomponi. For the reasons discussed above, the examiner’s rejection
must be reversed. We note, however, that claims 14-17 are directed to the
assay of claim 1, wherein the activity being assayed for is the presence or
absence of a gene associated with a malady or with a biological response. In
addition, claims 32 and 33 are directed to the assay of claim 1, where the
number of compounds in each test zone is 5-20 or 8-12, respectively.
We have concluded, supra, that Evans discloses an assay meeting the
limitations of claim 1. Since claims 14-17 are directed to assays to determine the
presence or absence of specific DNAs, and since claims 32 and 33 add only the
requirement of a specified number of compounds (e.g., probes), it may well be
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