Appeal 2007-1824
Application 10/639,718
significant distinction between a homogenous assay, as taught by Matray,
and a surface-mediated microarray assay, as taught by the present invention”
(id.). Appellants assert that “binding affinity alone can not be used to
predict the suitability of labeled ligand cocktail” (id.). While this may be
true, the claim does not require that binding affinity alone be used to predict
the suitability of a labeled ligand cocktail. In this regard, we find no error in
the Examiner’s conclusion that high affinity binding provides the advantage
of a more accurate detection method when detecting a plurality of analytes,
therefore providing the motivation to combine the teachings of Lahiri and
Matray (Answer 6-7). Accordingly, we are not persuaded by this assertion.
Further, since claim 1 is not limited to Cy5-motilin or GPCR assays we are
not persuaded by Appellants’ arguments relating to these two proteins.
Appellants also assert that Jordan’s teaching of the use of highly
selective ligands does not guarantee that such ligands are suitable for
multiplexed binding assays (Br. 8). Obviousness does not require
guaranteed or absolute predictability of success. For obviousness under
§103, all that is required is a reasonable expectation of success. In re
O’Farrell, 853 F.2d 894, 904, 7 USPQ2d 1673, 1681 (Fed. Cir. 1988). As
discussed above, the Examiner has explained why a person of ordinary skill
in the art would have had a reasonable expectation of success in performing
the method. Specifically, as the Examiner explains, all three references
teach the binding interactions between proteins and their receptors (Answer
19). In this regard, the Examiner finds that it would have been obvious to
modify the method of Lahiri with highly selective ligands that eliminate any
possibility of cross-reactivity between receptor types as taught by Jordan
(Answer 7). In addition, the Examiner finds that high affinity binding
7
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: September 9, 2013