Appeal 2006-2372
Application 10/854,708
USPQ2d 1865, 1870 (Fed. Cir. 2006) (“The fact that the motivating benefit
comes at the expense of another benefit, however, should not nullify its use
as a basis to modify the disclosure of one reference with the teachings of
another. Instead, the benefits, both lost and gained, should be weighed
against one another.”) (quoting Winner Int’l Royalty Corp. v. Wang, 202
F.3d 1340, 1349 n.8, 53 USPQ2d 1580, 1587 n.8 (Fed. Cir. 2000)).
Lastly, while Appellant asserts that Jennings utilizes an ICHOR
hematology analyzer which requires the use of two separate samples, we
find that Jennings simply identifies the ICHOR hematology analyzer as a
preferred device, and expressly states that the “[a]nalysis of blood samples
can be carried out using any hematology analyzer, preferably an automated
hematology analyzer” (Jennings 10: 1-2). Accordingly, we are not
persuaded by Appellant’s argument based on Jennings’ preference for the
use of the ICHOR hematology analyzer.
On reflection, we find no error in the Examiner’s prima facie case of
obviousness. Accordingly, we affirm the rejection of claim 1 under 35
U.S.C. § 35 U.S.C § 103(a) as unpatentable over Jennings. Since they were
not separately argued claims 2, 3, 8-11, 14, 18, 20, and 21 fall together with
claim 1.
Claim 6:
Claim 6 depends from and further limits the activation agonist of
claim 1 to one that is in solid form and is added to the sample in solid form.
The Examiner relies on Jennings as set forth above (Answer 5). The
Examiner finds, however, that Jennings fails “to teach the activation agonist
7
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