Appeal No. 2005-1216
Application No. 10/117,453
C. Claims 34 and 35 are rejected as being unpatentable under 35 U.S.C. § 103
in view of Hillenkamp I and II and Fodor.
For the reasons discussed above, we find that the Hillenkamp and Fodor patents
anticipate the sample holder recited in claim 30. With respect to Hillenkamp I, we
further find that the patent discloses that the projections or islands of the sample holders
can comprise sample support surfaces having different shapes. See, e.g., Hillenkamp I,
col. 9, lines 36-42. Attention is also directed to Figure 11 of Hillenkamp which
exemplifies sample support surfaces which appear to be non-uniform or irregular. With
respect to Fodor, we further find that the patent discloses that the sample support
surfaces can vary in shape “by way of the formation of trenches, v-grooves, mesa
structures, or the like” (col. 11, lines 42-44) as well as in size (col. 9, lines 10-15). In
view of these teachings, we find that Hillenkamp I and Fodor demonstrate that those of
ordinary skill in the art would have understood that the islands and sample holder
support surface can be varied in shape depending on the type and amount of sample to
be assayed in order to optimize the result. That is to say, we find that the shape of the
island and sample support surface is recognized in the art of sample holders as being a
“result effective variable.” In re Boesch, 617 F.2d 272, 276, 205 USPQ 215, 219 (CCPA
1980)(“discovery of an optimum value of a result effective variable in a known process
is ordinarily within the skill of the art”). Thus, in our view, it
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