Appeal No. 2006-3006 Page 7
Application No. 10/123,713
separated spots. See Lizardi, Example 11 at col. 80, l. 61; col. 81, ll. 8-12; and col.
82, ll. 27-34.
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 of success. See In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496
(CCPA 1970); In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1443 (Fed. Cir.
1991). All the elements of the claimed subject matter have been identified in the
prior art by the Examiner, and motivation with a reasonable expectation of success
has been provided for combining them. See Answer 3:24 to 4:8. Consequently,
we find sufficient evidence of prima facie obviousness. Appellants have not
provided persuasive evidence or arguments to rebut it. For the foregoing reasons,
the rejection of claim 1 is affirmed. Because separate reasons for patentability
were not provided, claim 2-4 and 6-13 fall with claim 1.
In affirming this rejection, we have adopted Appellants’ construction that the
claim limitation “uppermost surface of said support” as recited in claim 1 excludes
the array members from being immobilized in microwells. However, because we
concur with the Examiner that the prior art describes arrays on top surfaces that
satisfy the claim limitation as construed by Appellants, we have not found it
necessary to perform our own independent claim construction nor determine
whether this is the exclusive construction of claim 1.
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: September 9, 2013