Appeal 2007-2955
Application 10/190,425
used only “in the context of a protein-binding assay” (Appeal Br. 11), rather
than “the capture and analysis of cells, living or dead” (id.). Finally,
Appellants acknowledge that Taylor describes micro-arrays of living cells,
but argue that Taylor’s “micropatterning methods . . . involve considerable
chemical modifications [of a substrate], including cross-linking, coatings of
first hydrophilic then hydrophobic substances, and other steps” (id.), which
“[o]ne of skill in the art will recognize . . . cannot be conducted on a
hydrogel-coated surface” (Appeal Br. 11). Thus, Appellants argue,
“combination of the substrate of Taylor with [Wagner’s] hydrogel coating
would result in an inoperable reference” (id. at 12).
These arguments do not persuade us that the Examiner’s rejection
should be reversed. The question of obviousness is resolved on the basis of
underlying factual determinations including: (1) the scope and content of the
prior art; (2) the level of ordinary skill in the art; (3) the differences between
the claimed invention and the prior art; and (4) secondary considerations of
nonobviousness, if any. Graham v. John Deere Co., 383 U.S. 1, 17, 148
USPQ 459, 467 (1966). The Supreme Court has recently emphasized that
“the [obviousness] analysis need not seek out precise teachings directed to
the specific subject matter of the challenged claim, for a court can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ.” KSR Int’l v. Teleflex Inc., 127 S. Ct. 1727, 1741, 82
USPQ2d 1385, 1396 (2007). “Often, it will be necessary for a court to look
to interrelated teachings of multiple patents; the effects of demands known
to the design community or present in the marketplace; and the background
knowledge possessed by a person having ordinary skill in the art, all in order
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