Appeal No. 2003-1017 Page 7
Application No. 08/287,358
capable of simultaneously performing individual assays on a plurality of . . . samples”
(Answer, page 12). Even if we assume that the examiner is correct on these points, his
response still fails to address the requirement for receiving an image from each of the
wells, and is therefore unpersuasive. Finally, we cannot agree with the examiner’s
conclusion that “only meaningful data is obtained from emissions from wells and
therefore obtaining such data would render obvious view of the entire surface of the
plate” (id., page 13).
Appellants also note that claims 32-35 were rejected as unpatentable over the
combined teachings of Bjornson and Chow, but “the examiner did not even hint at why
such a rejection was made” (Brief, page 36). The only response we see from the
examiner is an irrelevant assertion that “the unexpected result of claim 32 where the
scheduler optimizes something is not found in the claims or specification” (Answer,
page 13).
35 U.S.C. § 103 requires that obviousness be determined based on the claimed
subject matter as a whole. Where, as here, the determination of obviousness is based
on less than the entire claimed subject matter, the examiner’s conclusion of
obviousness is unsound and cannot stand. On this record, we hold that the examiner
has not established a prima facie case of obviousness for even the broadest claims on
appeal. Accordingly, the rejections of the claims under 35 U.S.C. § 103 are reversed.
REVERSED
)
William F. Smith )
Administrative Patent Judge )
)
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