Ex Parte SeulDownload PDFBoard of Patent Appeals and InterferencesAug 4, 200910227246 (B.P.A.I. Aug. 4, 2009) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte MICHAEL SEUL __________ Appeal 2009-000906 Application 10/227,246 Technology Center 1600 __________ Decided: August 4, 2009 __________ Before DEMETRA J. MILLS, LORA M. GREEN, and JEFFREY N. FREDMAN, Administrative Patent Judges. FREDMAN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to a method of detecting the formation of an analyte-biomolecule complex. The Examiner has rejected the claims as indefinite, as obvious, and as failing to comply with the written description requirement. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Statement of the Case Appeal 2009-000906 Application 10/227,246 The Claims Claims 20-32 are on appeal. We will focus on claims 20 and 32, which are representative and read as follows: 20. A method of detecting the fomation of an analyte- biomolecule complex comprising the following steps: providing an array of biomolecules comprising a plurality of beads having biomolecules attached thereto, wherein the plurality of beads comprises different bead types, said bead types being distinguishable by said biomolecules and each bead type being associated with a unique chemical or physical characteristic that identifies the biomolecules attached to said bead type, wherein beads are arranged in a planar array, said biomolecules capable of forming complexes with corresponding analyte compounds; establishing a key which can be used for determining the location of particular bead types in the planar array; contacting the biomolecules with a sample that may contain one or more analyte compounds such that, if the analytes are present in the sample, said analytes bind to corresponding biomolecules to form analyte-biomolecule complexes; detecting signals indicating the formation of the analyte-biomolecule complexes; and identifying the biomolecules of the analyte- biomolecule complexes by correlating the locations of the signals with the previously-determined location of particular bead types. 32. A method of identifying biomolecules and analytes in an analyte-biomolecule complex comprising the following steps: providing an array of biomolecules comprising a plurality of subarrays that are spatially separated from each other, wherein each of the subarrays comprises a planar array comprising a plurality of beads having biomolecules attached thereto, wherein the plurality of beads comprises 2 Appeal 2009-000906 Application 10/227,246 different bead types, said bead types being distinguishable by said biomolecules and by an encoding chemical label that uniquely identifies the biomolecules attached to said bead type, said biomolecules capable of forming complexes with corresponding analyte comopunds and wherein the location of the subarrays, in conjunction with the encoding chemical label associated with each type of beads located in that subarray, uniquely identifies the types of biomolecules placed therein; establishing a key which can be used for determining the location of particular bead types in the planar array; contacting the biomolecules with a sample that may contain one or more analyte compounds such that, if the analytes are present in the sample, the analytes bind to corresponding biomolecules to form analyte-biomolecule complexes; detecting signals indicating the formation of the analyte-biomolecule complexes; and identifying the biomolecules of the analyte- biomolecule complexes by correlating the locations of the signals with the previously-determined location of particular bead types and with the location of the subarray in which the signal is located. The Prior Art Singer US 5,573,909 Nov. 12, 1996 Nova US 5,741,462 Apr. 21, 1998 Dehlinger US 5,763,263 Jun. 9, 1998 Baldwin US 5,766,963 Jun. 16, 1998 Singer (Singer ’331) US 5,866,331 Feb. 2, 1999 Wohlstadter US 6,207,369 B1 Mar. 27, 2001 The Issues 3 Appeal 2009-000906 Application 10/227,246 A. The Examiner rejected claims 20-32 under 35 U.S.C. § 112, first paragraph as failing to comply with the written description requirement (Ans. 5-8). B. The Examiner rejected claims 20-32 under 35 U.S.C. § 112, second paragraph as indefinite (Ans. 8). C. The Examiner rejected claims 20-23, 26-28, and 31 under 35 U.S.C. § 103(a) as obvious over Singer and Baldwin (Ans. 9-11). D. The Examiner rejected claims 24 and 25 under 35 U.S.C. § 103(a) as obvious over Singer, Baldwin, and Singer ’331 (Ans. 11-12). E. The Examiner rejected claim 29 under 35 U.S.C. § 103(a) as obvious over Singer, Baldwin, and Wohlstadter (Ans. 12-13). F. The Examiner rejected claim 30 under 35 U.S.C. § 103(a) as obvious over Singer, Baldwin, and Nova (Ans. 13-14). G. The Examiner rejected claim 32 under 35 U.S.C. § 103(a) as obvious over Singer, Baldwin, and Dehlinger (Ans. 14-15). A. 35 U.S.C. § 112, first paragraph, written description The Examiner identifies “correlating the location of the signals with the previously-determined location of particular bead types” in claims 20 and 32 as a second newly added limitation (Ans1. 6). The Examiner finds that the “description fails to support the second newly added limitation because the analyte can be identified by the coordinates of the bead without correlating or comparing the location of the signals with the previously- determined location of a particular bead types” (id. at 7). The Examiner finds that the “[S]pecification is also silent on a step of correlating the 1 Examiner’s Answer mailed April 18, 2008. 4 Appeal 2009-000906 Application 10/227,246 locations established by the key with the location of signals that indicate the formation of binding” (id. at 16). Appellant contends that the Specification describes “that the key (which the Examiner admits is described) is used to decode the fluorescent bright spots generated by binding of analyte and biomolecule” (App. Br2. 4). Appellant contends that the teaching in the Specification of a “key” to identify targets and a teaching that “‘binding to a specific target will create bright spots on the substrate whose spatial coordinates directly indicate the identity of the target’ necessarily means that there is a step of ‘correlating the location of the signals with the previously-determined location of particular bead types’” (App. Br. 4). In view of these conflicting positions, we frame the written description issue before us as follows: Has Appellant demonstrated that the Examiner erred in finding that the Specification does not describe a step of “correlating the location of the signals with the previously-determined location of particular bead types” as required by claims 20 and 32? Findings of Fact (FF) 1. The Specification teaches that a “heterogeneous panel contains particles or biomolecules which differ in the nature of the chemical or biochemical binding sites they offer to analytes in solution. In the event of binding, the analyte is identified by the coordinates of the bead, or cluster of beads, scoring positive” (Spec. 26, ll. 16-19). 2 Appeal Brief filed January 8, 2007. 5 Appeal 2009-000906 Application 10/227,246 2. The Specification teaches that the “present method relies on the functional elements of the invention to assemble a planar array of a multi- component mixture of beads which carry chemical labels in the form of tag molecules and may be so identified subsequent to performing the assay” (Spec. 26, ll. 19-22). 3. The Specification teaches that the “placement of ligands in a specific configuration on the surface of a planar substrate serves to maintain a key to the identity of any one in a large set of targets presented simultaneously to an analyte in solution for binding or hybridization” (Spec. 27, ll. 4-6). 4. The Specification teaches that “[i]n an assay relying on fluorescence, binding to a specific target will create bright spots on the substrate whose spatial coordinates directly indicate the identity of the target” (Spec. 27, ll. 6-8). Principles of Law In order to satisfy the written description requirement, “the applicant must … convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention.” Vas- Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991). Thus, “[t]he possession test requires assessment from the viewpoint of one of skill in the art.” Moba, B.V. v. Diamond Automation, Inc., 325 F.3d 1306, 1320 (Fed. Cir. 2003). One shows that one is “in possession” of the invention by describing the invention, with all its claimed limitations …. One does that by such descriptive means as words, structures, figures, diagrams, formulas, etc., that fully set forth the claimed invention. Although the exact terms need 6 Appeal 2009-000906 Application 10/227,246 not be used in haec verba, see Eiselstein v. Frank, 52 F.3d 1035, 1038, 34 USPQ2d 1467, 1470 (Fed.Cir.1995) (“[T]he prior application need not describe the claimed subject matter in exactly the same terms as used in the claims ….”), the [S]pecification must contain an equivalent description of the claimed subject matter. Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). Analysis While there is no ipsis verbis recitation of the “correlating” step in the Specification, ipsis verbis support is not required. Fujikawa v. Wattanasin, 93 F.3d 1559, 1570 (Fed. Cir. 1996). Appellant’s Specification clearly discloses “binding to a specific target will create bright spots on the substrate whose spatial coordinates directly indicate the identity of the target” (Spec. 27, ll. 6-8; FF 4). The person of skill in the art would reasonably interpret that teaching as requiring a correlation between the location of the signal, the “bright spots” with the spatial coordinates established by the “key” (FF 1-4). We are not persuaded by the Examiner’s argument that “such a description does not support the location being ‘previously determined’ . . . because the analyte can be identified by the coordinates of the bead without correlating” (Ans. 15). Without prior knowledge of the location of the bead, the “identity of the target” cannot be determined based upon the “bright spots” alone. The person of ordinary skill would have recognized that it is the combined knowledge of the location and the signal which permit identification of the biomolecule of interest. 7 Appeal 2009-000906 Application 10/227,246 Conclusion of Law Appellant has demonstrated that the Examiner erred in finding that the Specification does not describe a step of “correlating the location of the signals with the previously-determined location of particular bead types” as required by claims 20 and 32. B. 35 U.S.C. § 112, second paragraph The Examiner finds that “[c]laims 20 and 32 recites a step of ‘correlating the location of the signals with the previously- determined location of particular bead types’ which is indefinite because there has been no step for ‘determining the previously-determined location of particular bead types’” (Ans. 8). Appellant contends that “there is a step for ‘establishing a key which can be used for determining the location of particular bead types in the planar array,’ which provides clear antecedent basis” (App. Br. 4). In view of these conflicting positions, we frame the definiteness issue before us as follows: Has Appellant demonstrated that the Examiner erred in finding that claims 20 and 32 are indefinite because the step of “correlating the location of the signals with the previously-determined location of particular bead types” lacks antecedent basis for “determining the previously-determined location of particular bead types”? Principles of Law The test for definiteness under 35 U.S.C. § 112, second paragraph, is whether “those skilled in the art would understand what is claimed when the claim is read in light of the [S]pecification.” Orthokinetics, Inc. v. Safety 8 Appeal 2009-000906 Application 10/227,246 Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations omitted). Analysis We agree with Appellant that the phrase “previously-determined” has sufficient antecedent basis in the earlier step of “establishing a key which can be used for determining the location of particular bead types in the planar array” (App. Br. 4). The key itself necessarily represents a “previously-determined location of particular bead types” or the key would not function to determine the bead type locations as required by the claim and by the specification (see FF 1, 3). Conclusion of Law Appellant has demonstrated that the Examiner erred in finding that claims 20 and 32 are indefinite because the step of “correlating the location of the signals with the previously-determined location of particular bead types” lacks antecedent basis for “determining the previously-determined location of particular bead types”. C. 35 U.S.C. § 103(a) over Singer and Baldwin The Examiner finds that “Singer teaches microparticles having detectably distinct spectral characteristics of a plurality of dyes” (Ans. 9). The Examiner finds that “Singer fails to teach that the particle types are positioned in a planar array; establishing a key, which can be used to determine the location of particular bead types in a planar array; and correlating the location of the signals with previously-determined location of particular bead types” (Ans. 9-10). The Examiner finds that “Baldwin 9 Appeal 2009-000906 Application 10/227,246 teaches arranging an ordered array of beads, which are arrayed on a rigid template, such as a thin glass disk having tapered holes” (Ans. 10). Appellant contends that “the desirability of distinguishing encoded microparticles . . . is not suggested or disclosed by Singer” (App. Br. 6). Appellant contends that “the tags in Baldwin et al. cannot be decoded by fluorescent illumination, as in Singer et al. The tags in Baldwin et al. must be detached and analyzed independently, by determining the sequence or structure of the tag thereon, to decode them” (App. Br. 7). Appellant also contends that “[i]f one could . . . use the fluorescent signals in Singer et al. to identify individual microparticles, the Baldwin et al. ‘decodable image’ of the template, and the gel matrix itself, are not necessary because all the microparticles in Singer et al. are bound to the probe, before the reaction, and are associated with both probe and target, after reaction” (App. Br. 8). In view of these conflicting positions, we frame the obviousness issue before us as follows: Has Appellant demonstrated that the Examiner erred in finding claim 20 obvious over the combined teachings of Singer and Baldwin? Findings of Fact 5. Singer teaches that the “subject fluorescent microparticles are ideal reagents for the detection of a variety of target materials, including nucleic acids (e.g. RNA and DNA), proteins and carbohydrates” (Singer, col. 19, ll. 18-21). 10 Appeal 2009-000906 Application 10/227,246 6. Singer teaches that “[w]here a multicolor detection system is used, the aqueous suspension contains a number of different microparticle- labeled probes. In each case, the micro-particle-labeled probe is specific for a particular target or combination of targets” (Singer, col. 19, ll. 63-67). Singer expressly teaches multiplexing, teaching “microparticles having detectably distinct spectral characteristics are used for each target material, with each individual microparticle being labeled with a different target complement” (Singer, col. 16, ll. 58-61). 7. Singer teaches that “[m]ultiple labeled target materials are optionally resolved spatially . . . or using different spectral characteristics . . . . Typically, multiple labeled target materials are resolved using different microparticle-labeled probes with distinct spectral characteristics for each target material” (Singer, col. 21, ll. 51-57). 8. Singer teaches that “[f]luorescence resulting from the illuminated microparticle-lab[e]led probes that have formed a complex with the target materials can be used to detect the presence, location, or quantity of target materials” (Singer, col. 21, ll. 39-42). 9. The Examiner finds that “Singer fails to teach that the particle types are positioned in a planar array; establishing a key . . . and correlating the location of the signals with previously-determined location of particular bead types” (Ans. 9-10). 10. Baldwin teaches that “[i]n one example of an ordered array, beads are arrayed on a rigid template, such as a thin glass disk having tapered holes. The tapered holes are sized to allow only single beads to settle into them” (Baldwin, col. 13, ll. 56-59). 11 Appeal 2009-000906 Application 10/227,246 11. Baldwin teaches that “[i]t is possible to remove the template prior to detecting zones of activity if an image of the template on the matrix is made. This image can later be used to correlate the zones of inhibition with the positions of beads on the template” (Baldwin, col. 13, l. 66 to col. 14, l. 3). 12. Baldwin teaches that “the array can be ordered so that the position of the solid support on the array corresponds to the identity of the compound. Thus, once an assay has been carried out, and the position on the array determined for a support carrying an active compound, the identity of that compound can be easily determined” (Baldwin, col. 14, ll. 6-11). 13. Baldwin teaches that “[p]referably, however, the identity of active compounds is determined using the encoding system described above, which employs tags T encoding the identity of the compounds are applied to the solid supports” (Baldwin, col. 14, ll. 12-15). 14. Baldwin teaches that an array, or lawn assay “allows large libraries of compounds to be quickly and easily screened. Very little effort is required to array the solid supports or assay the compounds released from the supports” (Baldwin, col. 10, ll. 17-20). Principles of Law 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 (1966). 12 Appeal 2009-000906 Application 10/227,246 The Supreme Court has 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 Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” Id. at 416. “If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.” Id. at 417. Moreover, an “[e]xpress suggestion to substitute one equivalent for another need not be present to render such substitution obvious.” In re Fout, 675 F.2d 297, 301 (CCPA 1982). As noted by the Court in KSR, “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.” 127 S.Ct. at 1742. Analysis Singer teaches a method of detecting analyte-biomolecule complexes using a plurality of different beads where the bead type identifies the biomolecules (FF 5-6). Singer teaches contacting the samples with an analyte and detecting signals which indicate formation of a complex (FF 5- 8). Singer teaches that the samples can be “resolved spatially” (FF 7), but Singer does not teach the use of arrays for spatial resolution (FF 9). Baldwin teaches using ordered arrays to form keys which permit “resolving spatially” the location of individual beads (FF 10-11). Baldwin teaches that the use of arrays is advantageous since “once an assay has been carried out, and the position on the array determined for a support carrying 13 Appeal 2009-000906 Application 10/227,246 an active compound, the identity of that compound can be easily determined” (Baldwin, col. 14, ll. 6-11; FF 12-13). Applying the KSR standard of obviousness to the findings of fact, use of the array based method of Baldwin with keys to the location of the beads on the array with the bead based fluorescent analyte-biomolecule complex detection method of Singer represents a combination of known predictable elements which permit easier spatial resolution of the different biomolecular complexes. Such a combination is merely a “predictable use of prior art elements according to their established functions.” KSR, 550 U.S. at 417. We are not persuaded by Appellant’s argument that “the desirability of distinguishing encoded microparticles . . . is not suggested or disclosed by Singer” (App. Br. 6). In fact, Singer does teach, though does not exemplify, that “[m]ultiple labeled target materials are optionally resolved spatially” (Singer, col. 21, ll. 51-53; FF 7). Further, it is Baldwin who teaches that an array, or lawn assay “allows large libraries of compounds to be quickly and easily screened. Very little effort is required to array the solid supports or assay the compounds released from the supports” (Baldwin, col. 10, ll. 17- 20; FF 12, 14). Baldwin provides a reason to array the particles of Singer, for quick and easy screening (FF 12, 14). We are also not persuaded by Appellant’s argument that “the Baldwin et al. ‘decodable image’ of the template, and the gel matrix itself, are not necessary because all microparticles in Singer are bound to the probe, before the reaction, and are associated with both probe and target, after reaction . . . . There therefore is no need for a gel matrix in Singer et al. to identify the site of reaction” (App. Br. 8). As the Examiner notes, “[b]y spacing these 14 Appeal 2009-000906 Application 10/227,246 beads apart, the signal emitted from each individual bead [is] easily identified” (Ans. 17). In concert with this, Singer expressly teaches multiplexing, teaching “microparticles having detectably distinct spectral characteristics are used for each target material, with each individual microparticle being labeled with a different target complement” (Singer, col. 16, ll. 58-61; FF 6). We agree with the Examiner that an ordinary practitioner, taught by Singer that the beads could be “resolved spatially” (FF 7) and taught by Baldwin specific modes of spatial resolution of beads (FF 10-13), would have recognized that such spatial resolution would result in easier analysis and detection (FF 12-13). We also are not persuaded by Appellant’s argument that “in Baldwin et al., the molecules on the beads are decoded not by a ‘correlation’ step, but by removing the beads from the template and analyzing the tags encoding the identity of the compounds” (Reply Br. 2). When Baldwin teaches that a key can be used to identify the location of elements disposed on an array, Baldwin is evidence that the ordinary practitioner knows that an “array can be ordered so that the position of the solid support on the array corresponds to the identity of the compound. Thus, once an assay has been carried out, and the position on the array determined for a support carrying an active compound, the identity of that compound can be easily determined” (Baldwin, col. 14, ll. 6-11; FF 12). Applying this principle to the beads of Singer represents a “predictable use of prior art elements according to their established functions.” KSR, 550 U.S. at 417. Conclusion of Law 15 Appeal 2009-000906 Application 10/227,246 Appellant has not demonstrated that the Examiner erred in finding claim 20 obvious over the combined teachings of Singer and Baldwin. D. 35 U.S.C. § 103(a) over Singer, Baldwin, and Singer ’331 The Examiner rejected claims 24 and 25 under 35 U.S.C. § 103(a) as obvious over Singer, Baldwin, and Singer ’331 (Ans. 11-12). The Examiner finds that “Singer ’331 teaches a method for digital imaging fluorescence microscopy detection of an individual probe bound to a target molecule in a sample” (Ans. 11). The Examiner finds it obvious to “use a fluorescence microscope in conjunction with a charged coupled camera as taught by Singer ’331 in the modified method of Singer ’909 and Baldwin because CCD when used in conjunction with a microscope can image/scan/record high-resoluted signals” (Ans. 12). The Examiner provides sound fact-based reasoning for combining Singer, Baldwin and Singer ’331. As Appellant does not identify any material defect in the Examiner's reasoning, we affirm the rejection of claims 24 and 25 for the reasons stated by the Examiner. E. 35 U.S.C. § 103(a) over Singer, Baldwin, and Wohlstadter The Examiner rejected claim 19 under 35 U.S.C. § 103(a) as obvious over Singer, Baldwin, and Wohlstadter (Ans. 12-13). The Examiner finds that “Wohlstadter teaches a cassette containing a porous electrode that captures particles for the detection of analytes by electrochemiluminescence (ECL)” (Ans. 12). The Examiner finds it obvious to “use electrode as a substrate for capturing antibodies or particles coated with a label or binding reagents as taught in Wohlstadter in the combined method of Singer Baldwin because electrodes are known as highly 16 Appeal 2009-000906 Application 10/227,246 detectable substrate in ECL assay” (Ans. 13). The Examiner provides sound fact-based reasoning for combining Singer, Baldwin and Wohlstadter. As Appellant does not identify any material defect in the Examiner's reasoning, we affirm the rejection of claim 19 for the reasons stated by the Examiner. F. 35 U.S.C. § 103(a) over Singer, Baldwin, and Nova The Examiner rejected claim 30 under 35 U.S.C. § 103(a) as obvious over Singer, Baldwin, and Nova (Ans. 13-14). The Examiner finds that “Nova teaches a matrix planar array which can be silicon chip . . . Such arrayed matrix is useful in high-throughput screenings” (Ans. 13). The Examiner finds it obvious to “use silicon chip as a substrate as taught by Nova in the combined method of Singer and Baldwin because silicon chip is useful as an array for high-throughput screenings” (Ans. 14). The Examiner provides sound fact-based reasoning for combining Singer, Baldwin and Nova. As Appellant does not identify any material defect in the Examiner's reasoning, we affirm the rejection of claim 30 for the reasons stated by the Examiner. G. 35 U.S.C. § 103(a) over Singer, Baldwin, and Dehlinger The Examiner rejected claim 32 under 35 U.S.C. § 103(a) as obvious over Singer, Baldwin, and Dehlinger (Ans. 14-15). The Examiner finds that “Singer and Baldwin fail to teach an array comprising of a plurality of subarrays” (Ans. 14). The Examiner finds that “Dehlinger teaches the concept of dividing a planar array into subarrays so 17 Appeal 2009-000906 Application 10/227,246 that a selected subarray or subset of the array into which a selected one of a plurality of different chemical reagents in a reagent solution is to be introduced and a complementary subset of remaining tubes in the array can be identified” (Ans. 14). Appellant contends that “Dehlinger cannot be combined with Baldwin et al. or with Singer, because Dehlinger relates to a ‘positionally addressable combinatorial library’” (App. Br. 9). Appellant contends that “the arrays of tubes and subarrays of tubes in Dehlinger do not relate to microparticles encoded with flurosencent markers (as in Singer), or to encoding particles with detachable markers, as in Baldwin et al.” (App. Br. 9). In view of these conflicting positions, we frame the obviousness issue before us as follows: Has Appellant demonstrated that the Examiner erred in finding claim 32 obvious over the combined teachings of Singer, Baldwin, and Dehlinger? Findings of Fact 15. Dehlinger teaches “identifying, in a dense array of capillary tubes, a selected subset of tubes into which a selected one of a plurality of different chemical reagents is to be introduced, and a complementary subset of remaining tubes in the array” (Dehlinger, col. 3, ll. 56-61). Analysis While Appellants correctly note that Dehlinger is drawn to a different type of combinatorial method than the methods of Singer and Baldwin (App. Br. 9), we agree with the Examiner that “Dehlinger is not relied upon for teaching of tubes but rather is relied upon for the concept of dividing a planar array into subarrays” (Ans. 19). 18 Appeal 2009-000906 Application 10/227,246 In Icon, the Federal Circuit explained that “A reference is reasonably pertinent if, even though it may be in a different field from that of the inventor's endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor's attention in considering his problem.” In re Clay, 966 F.2d 656, 659 (Fed.Cir.1992). In other words, “familiar items may have obvious uses beyond their primary purposes.” KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 127 S.Ct. 1727, 1742 (2007). In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379-1380 (Fed. Cir. 2007). Applying the Icon principle to the instant facts, the Examiner has shown that the advantages of dividing an array into subarrays permits more individual analysis of the individual samples, which is reasonably found to enhance the analysis of Singer and Baldwin (see Ans. 19). We agree with the Examiner that it would have been obvious to divide the arrays of Baldwin and Singer into subarrays as taught by Dehlinger in order to permit separate delivery of reagents and separate analysis of individual samples (see Ans. 19). Conclusion of Law Appellant has not demonstrated that the Examiner erred in finding claim 32 obvious over the combined teachings of Singer, Baldwin, and Dehlinger. 19 Appeal 2009-000906 Application 10/227,246 SUMMARY In summary, we reverse the rejection of claims 20-32 under 35 U.S.C. § 112, first paragraph. We reverse the rejection of claims 20-32 under 35 U.S.C. § 112, second paragraph. We affirm the rejection of claim 20 under 35 U.S.C. § 103(a) as obvious over Singer and Baldwin. Pursuant to 37 C.F.R. § 41.37(c)(1)(vii)(2006), we also affirm the rejections of claims 21-31 as these claims were not argued separately. We affirm the rejection of claim 32 under 35 U.S.C. § 103(a) as obvious over Singer, Baldwin and Dehlinger. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv)(2006). AFFIRMED Ssc: MORGAN & FINNEGAN TRANSITION TEAM C/O LOCKE LORD BISSELL & LIDDELL 3 WORLD FINANCIAL CENTER NEW YORK, NY 10281-2101 20 Copy with citationCopy as parenthetical citation