Appeal No. 2003-1738 Page 5
Application No. 08/739,396
and constructing a batch of separate tiles; and a process of constructing an array
of a plurality of species of proteins (claims 54-55, 60) or peptides (claims 56-57,
61).” Examiner’s Answer, page 5.1 However, the examiner concluded that
Rava’s disclosure would have made obvious the method now claimed to those of
ordinary skill in the art. See id., pages 5-6.
Appellants argue that the rejection is defective because, among other
things,
the Examiner has not pointed to anything in Rava et al. which
discloses or suggests subdividing the different units of planar
material (with their different species attached) to form different
batches of tiles, then affixing separate tiles from the batches to a
same support.
Supplemental Appeal Brief, page 9.
We agree with Appellants that the rejection must be reversed. Prima facie
obviousness requires, among other things, that the prior art disclose or suggest
all of the limitations of the claimed invention. See In re Ochiai, 71 F.3d 1565,
1572, 37 USPQ2d 1127, 1133 (Fed. Cir. 1995) (proper § 103 analysis requires “a
searching comparison of the claimed invention – including all its limitations – with
the teaching of the prior art”); 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.”).
1 We note in passing that the examiner’s concession seems to contradict the earlier rejection for
anticipation. Since we have reversed that rejection, however, we need not dwell on the apparent
inconsistency.
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