Appeal No. 2006-1563
Application No. 09/839,778
respect to Claim 8.
We find the examiner has presented evidence to support a prima
facie case of anticipation which has not been convincingly rebutted by appellants. The
rejection of the claims for anticipation is affirmed.
Obviousness
Claims 7 and 10-12 stand rejected under 35 U.S.C. § 103(a) over Jackowski in
view of Sawai. We select claim 10 as a representative claim for purposes of this
rejection.
In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden
of presenting a prima facie case of obviousness. See In re Rijckaert, 9 F.3d 1531,
1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie case of obviousness is
established when the teachings from the prior art itself would appear to have suggested
the claimed subject matter to a person of ordinary skill in the art. In re Bell, 991 F.2d
781, 783, 26 USPQ2d 1529, 1531 (Fed. Cir. 1993). An obviousness analysis requires
that the prior art both suggest the claimed subject matter and reveal a reasonable
expectation of success to one reasonably skilled in the art. In re Vaeck, 947 F.2d 488,
493, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991). With this as background, we analyze
the prior art applied by the examiner in the rejection of the claims on appeal.
According to the examiner (Answer, page 5)
Jackowski provides several examples of methods to determine the
extent or amount of binding between the antibodies and markers (see for
example, col. 28, lines 8-38.) Jackowski teaches that other methods for
determining the presence and amount of a marker or analyte may be used
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