Appeal No. 2006-1547 Page 12
Application No. 10/114,668
5-15. Examples include liposomes (column 7, line 5) and wax beads, where an
aqueous reagent is coated with a waxy polymer (e.g., column 12, lines 50-60).
According to Kosak, “The reagent entrapped within wax beads solves the problems of
adding stepwise, one or more essential reagents into a reaction medium when needed,
without reopening containers or interrupting the procedure.” Id., column 3, lines 1-5.
See also, Answer, pages 8-9. This reference in combination with Nikiforov or Yu was
stated by the examiner to render obvious the claims. Yu was discussed above, and
Nikiforov is described on page 10 of the Answer.
The Shipwash patent was further relied upon by the examiner in rejecting claims
13, 22, and 23 for its general teaching of pulse-jet technology. In ¶ 179, Shipwash
states: “A range of new micropipetting systems based on ink-jet principles have been
developed for delivery of nanoliter volumes of samples and reagents to microwells (for
example, see, Rose and Lemmo (1997) Lab Automat News: 2:12-9; Fischer-Fruholz
(1998) American Lab; Feb 46-51).” The examiner argued that it would have been
obvious to have utilized this technology “to enable more rapid, automated and precise
delivery of the reactants to the microwells.” Answer, page 16.
The examiner bears the initial burden of showing unpatentability. See, e.g.,
In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993).
A prima facie case of obviousness requires evidence that the prior art disclosed or
suggested all of the elements of the claimed invention, and that those skilled in the art
would have been motivated to combine those elements with a reasonable expectation
7 Church et al. (Church), U.S. Pub. Pat. App. No. 2002/0127552, published Sep. 12, 2002
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