Appeal No. 2005-1216
Application No. 10/117,453
V. Obviousness
The examiner argues that the teachings of Hillenkamp I, Hillenkamp II and Vestal
“differ from the instant invention in failing to teach sample support surfaces comprising
polymers, biopolymers, reactants, or nucleotide probes further having areas less than
about 10,000 µm2.” Answer, p. 9. In this regard, the examiner points out that
Fodor discloses “substrates with wells, raised regions, etched trenches, or the like. . . .
[where] [i]n preferred embodiments the area [of the exposed regions are] less than
10,000 µm2 or more preferably 100 µm2.” Id. The examiner concludes that
[i]t would have been obvious to one of ordinary skill in the art at the time
the invention was made to configure a sample holder comprising areas less than
about 1,000 µm2 comprising various known reactants as taught by Fodor et al. in
the samples [sic, sample] holders taught by Hillenkamp [I], Hillenkamp [II], or
Vestal in order to configure sample holders capable of multiple different and
diverse sample analysis/sequencing in rapid detection systems. See Fodor et al.
column 3 lines 1-3.
A person of ordinary skill in the art would have been motivated to utilize
such configuration in order to analyze multiple binding sample sets including a
plurality of small peptides to explore the relationship between structure and
function in biology [Answer, pp. 9-10].
We find the examiner’s position untenable.
It is well established that the examiner has the initial burden under 35 U.S.C.
§ 103 to establish a prima facie case. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992); In re Piasecki, 745 F.2d 1468, 1471-72, 223 USPQ 785,
787-88 (Fed. Cir. 1984). It is the examiner’s responsibility to show that some objective
teaching or suggestion in the applied prior art, or knowledge generally available [in the
art] would have led one of ordinary skill in the art to combine the references to arrive at
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