Appeal No. 2001-2521 Page 5
Application No. 08/738,464
analyte in a sample.” Id., page 5. He nevertheless concluded that
it would have been obvious to one having ordinary skill in the art at
the time of invention to have detected or measured analyte
concentration in a sample by continuously and contemporaneously
measuring the physicochemical changes occurring in a biosensor
coated with a binding partner for the analyte . . . as a result of the
reaction of the analyte with the binding partner, as suggested by
the reference, and use a piezoelectric biosensor as the
physicochemical devi[c]e because the reference teaches that any
suitable physicochemical measurement may be employed and
includes piezoelectric properties among them.
Id.
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial
burden of presenting a prima facie case of obviousness. Only if that burden is
met, does the burden of coming forward with evidence or argument shift to the
applicant.” In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir.
1993). The obviousness analysis must be based on the claimed “subject matter
as a whole.” 35 U.S.C. § 103(a). That is, every limitation must be considered.
See In re Lowry, 32 F.3d 1579, 1582, 32 USPQ2d 1031, 1034 (Fed. Cir. 1994)
(“The Patent and Trademark Office (PTO) must consider all claim limitations
when determining patentability of an invention over the prior art.”).
In this case, we agree with Appellants that Issachar does not support a
prima facie case of obviousness. The claimed method requires use of a system
comprising a “sample device” and a “reference device.” The examiner has not
shown that these limitations would have been suggested by Issachar. The
examiner responded to Appellants’ argument on this point as follows:
Applicants also argue that the reference does not teach the
employment of [a] second sensor comprising a receptor having little
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007