Ex Parte Seul

Board of Patent Appeals and Interferences

Aug 4, 2009

10227246 (B.P.A.I. Aug. 4, 2009)

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
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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
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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.
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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.
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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
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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.
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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
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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
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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).
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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).
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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).
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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
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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
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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
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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
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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
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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).
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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.
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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

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MORGAN & FINNEGAN TRANSITION TEAM
C/O LOCKE LORD BISSELL & LIDDELL
3 WORLD FINANCIAL CENTER
NEW YORK, NY 10281-2101

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