Appeal 2006-2372
Application 10/854,708
1741, 82 USPQ2d 1385, 1396 (2007). See also id. at 1742, 82 USPQ2d at
1397 (“A person of ordinary skill is also a person of ordinary creativity, not
an automaton.”). In this regard, we note that “[w]hen a work is available in
one field of endeavor, design incentives and other market forces can prompt
variations of it, either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability.” Id. at 1740, 82 USPQ2d at 1396.
In our opinion, a person of ordinary skill in the art at the time the
invention was made would have readily understood that Jennings’ method
could have been predictably improved by performing all of the method steps
in a single tube. We find no evidence on this record that this modification or
variation in Jennings’ method would have been unpredictable or produced
an unexpected result. Instead, as the Examiner explains, a person of
ordinary skill in the art would have realized that maintaining the sample in a
single tube reduces the risk of contaminating not only the sample but those
involved in performing the method (Answer 5 - 8).
Further, we are not persuaded by Appellant’s argument based on
Jennings’ teaching that the use of two tubes provides an opportunity to
perform “duplicate runs of a specimen if questionable results were initially
obtained” (Jennings 15: 32-33). We find that the Examiner has provided a
plausible rationale as to why a person of ordinary skill in the art would
perform the method in a single tube, specifically to limit the possibility of
contamination of both the sample and personnel performing the method. It
is well settled that obviousness analyses involving potential modifications of
the prior art entail weighing the relative trade-offs of the various
alternatives. See Medichem S.A. v. Rolabo S.L., 437 F.3d 1157, 1165, 77
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