Appeal 2007-1163
Application 10/172,470
robotic arm to move a microtiter plate containing reagents onto a plate
holder (Hansen, col. 5, ll. 8-20 and ll. 45-61). One of ordinary skill in the art
may have been motivated by this teaching to use a robotic arm to move, for
example, the microtiter plate of the base assembly described in Brennan
(Brennan, col. 6, ll. 5-7).
However, the Examiner has not provided any reason why one of
ordinary skill in the art would have used this robotic arm to move support 75
“to and from [a] station for monomer addition and a flow cell”, i.e., a well of
the microtiter plate, or “from one flow cell to another flow cell” in the
apparatus described in Brennan. See KSR Int’l v. Teleflex Inc., 127 S. Ct.
1727, ___ 82 USPQ2d 1385, 1396 (2007) (“[A] patent composed of several
elements is not proved obvious merely by demonstrating that each of its
elements was, independently, known in the prior art. Although common
sense directs one to look with care at a patent application that claims as
innovation the combination of two known devices according to their
established functions, it can be important to identify a reason that would
have prompted a person of ordinary skill in the relevant field to combine the
elements in the way the claimed new invention does.”). Therefore, we
reverse the rejection of claim 28 under 35 U.S.C. § 103.
SUMMARY
We affirm the rejection of claims 23 and 25 under 35 U.S.C. § 102(b)
and the rejection of claim 24 under 35 U.S.C. § 103. However, we reverse
the rejection of claims 26 and 27 under 35 U.S.C. § 102(b) and the rejection
of claim 28 under 35 U.S.C. § 103.
11
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: September 9, 2013