Appeal No. 2006-1547 Page 14
Application No. 10/114,668
examiner has set forth adequate motivation to have complemented the deficiencies
utilizing the teachings of Nikiforov, Yu, and/or Shipwash. See e.g., Examiner’s Answer,
pages 11 and 15. Essentially, Kosak teaches the broad application of their technology
to nucleic acid reactions. Kosak, Abstract. Modifying Kosak to accomplish specific
nucleic acid reactions is a routine matter of adapting this technology to other types of
reactions as described in the additionally cited prior art references which would be well
within the skill set of the ordinary skilled worker in the art. Appellant has not presented
arguments to the contrary.
Because these references represent analogous art in the same technology field,
the person or ordinary skill would reasonably been expected to look to them for the
purpose of engaging Kosak’s technology. In addition to the motivation-suggestion-
teaching test, “a related test--the ‘analogous art’ test-- has long been part of the primary
Graham analysis articulated by the Supreme Court. See Dann, 425 U.S. at 227-29,
96 S.Ct. 1393; Graham, 383 U.S. at 35, 86 S.Ct. 684. The analogous-art test requires
that the Board show that a reference is either in the field of the applicant's endeavor or
is reasonably pertinent to the problem with which the inventor was concerned in order to
rely on that reference as a basis for rejection. In re Oetiker, 977 F.2d 1443, 1447
(Fed.Cir.1992).” In re Kahn, 441 F.3d 977, 986-987, 78 USPQ2d 1329, 1335-1336
(Fed. Cir. 2006).
Appellant provided no other basis to distinguish the claims over the cited prior
art. Since Appellant did not argue that any of the claim limitations were not satisfied by
the combination of cited references, we affirm the examiner’s rejection with respect to
claims 1-7, 12, 14, 17, 18, and 39 as being obvious over Kosak in view of Nikiforov;
Page: Previous 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 Next
Last modified: November 3, 2007