Ex Parte Sumida et al

Patent Trial and Appeal Board

Mar 14, 2017

12578576 (P.T.A.B. Mar. 14, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/578,576 10/13/2009 KYOICHI SUMIDA 10196.0004-01000 6598
22852 7590 03/16/2017
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413
EXAMINER
BROWN, MELANIE YU
ART UNIT PAPER NUMBER
1677
NOTIFICATION DATE DELIVERY MODE
03/16/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
regional-desk @ finnegan. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KYOICHI SUMIDA, KAZUNARI FUJIO, and
SHINZO KOBATAKE1
Appeal 2015-001264
Application 12/578,576
Technology Center 1600
Before ERIC B. GRIMES, ULRIKE W. JENKS, and
RACHEL H. TOWNSEND, Administrative Patent Judges.
TOWNSEND, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35U.S.C. § 134 involving claims to a reagent
kit, which have been rejected as obvious. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm, but designate our affirmance as a New Ground of
Rejection. 37 C.F.R. § 41.50(b).
1 Appellants identify the Real Party in Interest as Wako Pure Chemical
Industries Ltd., Osaka, Japan. (Appeal Br. 3.)
Appeal 2015-001264
Application 12/578,576
STATEMENT OF THE CASE
Methods and reagents for measuring hyaluronic acid are known in the
art. (Spec. 1—2.) Appellants’ invention is directed to a reagent kit for
measuring hyaluronic acid. (Spec. 2.)
Claims 6—9 are on appeal. Claim 6 is representative and reads as
follows:
6. A reagent kit for the measurement of hyaluronic acid
comprising a first reagent solution comprising a hyaluronic acid
binding protein and a second reagent solution comprising an
antibody to hyaluronic acid binding protein supported on a
carrier by physical adsorption.
(Appeal Br. 21.)
The following ground of rejection by the Examiner is before us on
review:
Claims 6—9 under 35 U.S.C. § 103(a) as unpatentable over Mochida,2
Hara,3 Southgate,4 and Uylen.5
2 Mochida et al., US 4,690,908, issued Sept. 1, 1987.
3 Hara et al. WO 2002/101389 Al, published Dec. 19, 2002. We rely on the
English translation of this document, US 2004/0175769 Al, published Sept.
9, 2004, as did the Examiner and Appellants.
4 Southgate et al., US 5,863,502, issued Jan. 26, 1999. The Examiner’s
initial statement of the rejection cites to Tsang et al., US 5,688,657, rather
than Southgate. (Final Action 2.) However, the rejection itself refers to
Southgate, and never refers to Tsang et al. {Id. at 2—8.) Appellants’ Appeal
Brief pointed out the discrepancy, addressed the Examiner’s rejection as if it
relied on Southgate, and requested clarification to the extent their
understanding was incorrect. (Appeal Br. 9, n5.) The Examiner did not
refute Appellants’ understanding in the Examiner’s Answer. Thus, we deem
the Examiner’s rejection to rely on Southgate, not Tsang et al.
5 Uylen et al., US 5,474,902, issued Dec. 12, 1995.
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DISCUSSION
The Examiner finds that Hara teaches a kit for detecting hyaluronic
acid in which a reagent comprises a hyaluronic acid binding protein and an
antibody that binds to the hyaluronic acid binding protein. (Final Action 3;
Ans. 3.) According to the Examiner “[t]he rejection is based on including
the reagent components for agglutinating hyaluronic acid taught by Hara in a
kit for agglutination as taught by Mochida.” (Ans. 7.)
The Examiner “reliefs] upon [Mochida] for teaching reagents required
for detection of an analyte assembled in a kit.” (Ans. 8.) According to the
Examiner, Mochida is “generic with respect to the detection of antibodies
and antigens that can be incorporated into the assay” (Final Action 4; Ans.
4) and teaches “multiple reagent components similar to Hara” (Ans. 9). In
particular, the Examiner finds that Mochida teaches a reagent kit for
measuring analyte that includes a “sample containing a target analyte
binding protein in the form of an antigen-antibody complex” and a second
reagent that includes an “anti-analyte-binding protein antibody which is
supported on a latex carrier. . . by being physically or chemically bound.”
(Final Action 2—3; Ans. 3; Ans. 8—9 (noting that Mochida’s standard
solution “that contains a target analyte binding protein that forms a complex
with the analyte . . . is . . . considered a reagent”). The Examiner
acknowledges that Mochida only denominates one component of its kits as a
reagent, i.e., the antibody-carrier, but that the kit, nevertheless, includes an
“additional assay component,” i.e., the standard solution. (See, e.g., Ans. 9.)
Uylen is relied upon by the Examiner for its teaching that a latex
particle can be coated with antibodies either by physical adsorption or
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chemical binding, in order to provide a ligand for the separation of antigens
from a sample. (Final Action 4; Ans. 4.) Thus, the Examiner finds that the
prior art teaches physical adsorption and chemical binding of latex particles
and antibodies are functionally equivalent immobilization techniques {id.),
and that it would have been an obvious choice based on economics to use
physical bonding instead of chemical bonding between an anti-analyte
binding protein antibody to a carrier and that such a change would be a
“mere alternative and functionally equivalent immobilization technique” that
one of ordinary skill in the art would expect to provide the “same . . .
immobilization effect” (Final Action 4—5; Ans. 5).
The Examiner finds that Mochida does not teach “the analyte, analyte
binding protein and anti-analyte binding protein antibody being hyaluronic
acid, a hyaluronic acid binding protein and an anti-hyaluronic acid binding
protein antibody.” (Final Action 3; Ans. 3.) The Examiner submits that it
would have been obvious to include in the kit of Mochida “an analyte of
hyaluronic acid, a first reagent containing an analyte binding protein being a
hyaluronic acid binding protein to form an antibody-antigen complex in the
sample and the anti-analyte binding protein antibody being an anti-
hyaluronic acid binding protein antibody” as taught by Hara because “one
would be motivated to use the appropriate reagents for detection of the
desired analyte.” (Final Action 4; Ans. 4.) According to the Examiner, one
of ordinary skill in the art would have a reasonable expectation of success
in using the hyaluronic acid/hyaluronic acid complex of Hara et
al. as the antigen-antibody complex of Mochida et al. and the
anti-hyaluronic acid binding protein antibody of Hara et al. as
the antibody attached to the carrier particle of Mochida et al.
because Mochida et al. teach that a measurement kit of a
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reaction that has been carried out on a slide is capable of being
used with the present invention . . . and therefore would provide
the proper guidance to one having ordinary skill in the art in
using the binding reagents and samples taught in Hara et al. in
the agglutination detection method taught by Mochida et al.
(Final Action 5; Ans. 5.)
The Examiner finds that “[njeither Hara nor Mochida teach separation
of the agglutination components into separate reagents” but that “Southgate
is relied upon for teaching separation of [such] assay components into
separate reagents.” (Ans. 7.) According to the Examiner Southgate
“demonstrate[es] that an analyte binding partner component may be
provided in a reagent separate from an anti-analyte binding partner
component in the kit taught by Mochida” (Ans. 11.) In particular, the
Examiner finds that Southgate teaches an indirect assay that uses two
separate reagents (Final Action 3; Ans. 12), namely, “a first reagent
comprising a binding protein that binds to a target analyte and a second
reagent that contains a labeled antibody that binds to the target/binding
protein complex” (Final Action 3 (citing Southgate 31:1—17); Ans. 13 (“the
embodiment taught by Southgate that is relied upon for the instant rejection
is an indirect assay in which the binding agents are a binding agent specific
for an analyte and an anti-binding agent specific for the analyte, which is not
a sandwich assay relationship”). The Examiner finds that
it would have been obvious to one having ordinary skill in the
art at the time the invention was made to separate first and
second components making up the reagent taught by Hara et al.,
as taught by Southgate et al., in order to ensure sufficient
binding between the analyte and the binding protein, and the
binding protein and the antibody to the binding protein in an
indirect assay.
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(Final Action 4; Ans. 4—5). Moreover, according to the Examiner, “one
having ordinary skill in the art would recognize the need to separate the
binding protein and antibody to the binding protein [of Hara] into separate
reagents in order to perform the method taught by Mochida.” (Adv. Action
4). Thus, according to the Examiner, “when the binding components taught
by Hara are included in the kit of Mochida in view of the teachings of
Southgate, the hyaluronic acid binding protein and the anti-hyaluronic acid
binding protein may be provided in the kit as separated first and second
reagents.” (Ans. 11.)
We agree with the Examiner’s conclusion that the teachings of
Mochida, Hara, Southgate, and Uylen would have made it obvious to
provide a reagent kit in which the hyaluronic acid binding protein and the
anti-hyaluronic acid binding protein antibody would be provided as separate
first and second reagents. However, we rely on portions of Southgate not
identified by the Examiner and our reasoning differs somewhat from the
Examiner’s. Therefore, we will designate our affirmance as a New Ground
of Rejection, in order to provide Appellants with a fair opportunity for
further prosecution, if so desired. See In re Kronig, 539 F.2d 1300, 1302
(CCPA 1976) (“[T]he ultimate criterion of whether a rejection is considered
‘new’ in a decision by the board is whether appellants have had fair
opportunity to react to the thrust of the rejection.”)
A reagent kit having multiple separate reagents
We agree with the Examiner that one of ordinary skill in the art could
consider the standard of Mochida to be a reagent. “[Djuring examination
proceedings, claims are given their broadest reasonable interpretation
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consistent with the specification.” In re Hyatt, 211 F.3d 1367, 1372 (Fed.
Cir. 2000). Appellants’ Specification does not provide a particular
definition for the term “reagent.” Throughout, the term is used in its
ordinary sense, i.e., a substance that is used in chemical analysis. (See, e.g.,
Spec. 1—2 (discussing latex particles used as “a reagent for measuring
hyaluronic acid” in the prior art); Spec. 3,7, 10 (describing reagents of the
invention as substances used in a method for measuring hyaluronic acid).)
Claim 6 recites that the “reagent kit” is “for the measurement of hyaluronic
acid” and comprises two different “reagent solution[s].” (Appeal Br. 21
(Claim 6).) Under the broadest reasonable interpretation consistent with the
Specification, we understand reagent as used in conjunction with solution to
require only that the recited material that is contained within the solution can
be used in the measuring of hyaluronic acid, i.e., it is a substance that is
capable of being used in the chemical measurement of hyaluronic acid.
The Mochida standard solution which is provided in a test tube is so
used; the standard with the analyte and added antibody is used to obtain a
standard curve, which curve is then used to determine analyte in a sample.
(See e.g., Mochida col. 10—11 (Example 1)). Consequently, we agree with
the Examiner that Mochida teaches reagent kits with multiple reagents in
solution (see Mochida col. 14—15 (Example 10)), one of which is an anti­
analyte binding protein supported on a latex carrier by a chemical or
physical bond (Mochida 1:60—66), and a second of which is an antigen-
antibody complex used for determining a standard curve.
Arguments that “one could conduct the complete assay of Mochida
using” Mochida’s two reagents while one could not conduct the assay with
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Application 12/578,576
the two claimed regent solutions (Appeal Br. 11—12) is not pertinent to any
issue of patentability of claim 6, including whether Mochida “teach[es] the
two reagent solutions of the claimed invention” (Appeal Br. 12). The
patentability of composition claims, which the reagent kit of claim 6 is,
depends on the claimed elements of that composition, not on its use. See
Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed.
Cir. 2002). And it is not decisive that Mochida does not teach the two
claimed reagent solutions. The rejection was one of obviousness not of
anticipation. As the Examiner made clear, Mochida was relied upon for
teaching that a kit for detecting an analyte of interest could include multiple
reagents required for such detection, including binding partners. (Ans. 8;
Final Action 4; Ans. 4.)
A reagent kit with an analyte binding partner and an anti-analyte binding
partner antibody
As Appellants point out (Appeal Br. 12), and regardless of the fact
that the standard of Mochida can be considered a reagent, Mochida does not
teach the following reagents: an anti-analyte binding partner antibody, as
well as an analyte binding partner. Rather, it only teaches using an analyte
binding partner that may be an antibody. (Appeal Br. 10 (noting Mochida
involves “one binding pair of molecules: an antigen and its antibody.”); see,
e.g., Mochida 8: 3—49, col. 10—11 (Example 1), col. 14—15 (Example 10).)
While that may be true, the Examiner relies on Hara for teaching an anti­
analyte binding partner antibody as well as an analyte binding partner as
reagents in the detection of hyaluronic acid. (See, e.g., Ans. 3 4.)
However, we agree with Appellants that the motivation to separate the
two components that the Examiner pointed to in Southgate is problematic.
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The portion of Southgate the Examiner relies upon does not teach using
multiple reagents where one of the reagents is an anti-analyte binding
partner antibody, and another reagent is an analyte binding partner. As
Appellants note, Southgate’s indirect enzyme-linked immunosorbent assay
(“ELISA”) method, in which two separate reagents are employed to detect
an analyte, teaches the use of two different analyte binding partners to
capture and detect the analyte of interest. (Appeal Br. 14—17; Southgate
31:1—10.) While one of those binding partners is an antigen that can bind
the analyte (Southgate refers to the analyte as the “first antibody”), the
second binding partner is a labelled antibody that can bind the analyte.
(Southgate 31:1—10.) The second binding partner is not a labelled antibody
that is specific for the antigen that can bind the analyte. Thus, whether or
not Southgate discloses an indirect ELISA, the portion of Southgate relied
upon by the Examiner does not “demonstrat[e] that an analyte binding
partner component may be provided in a reagent separate from an anti­
analyte binding partner” (Ans. 11).
We note, however, that Southgate teaches a double antibody-sandwich
ELISA. (Southgate 31:39-49.) In this assay, a labeled antibody that is
specific for an antigen, which antigen is specific for a first analyte (the
analyte again being denominated by Southgate as a first antibody), is used to
detect the analyte.6 In particular Southgate teaches:
6 In the Answer, the Examiner stated that Southgate teaches a “first reagent
with an analyte binding partner that binds to the analyte, and a second
reagent comprising a labeled binding partner that binds to the analyte
binding partner.” (Ans. 11.) Thus, although not specifically citing to this
assay, it appears the Examiner recognized this teaching in Southgate in
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In another assay (double antibody-sandwich ELISA) that uses a
support with bound antibody, a sample which may contain a
first antibody from a first species is incubated with a support
that has bound to it a second antibody from a second species
that is specific for antibodies of the first species. The antigen
for the first antibody is then incubated with the support. Finally,
a third antibody specific for a portion of the antigen not bound
by the first antibody is incubated with the support. The third
antibody has an attached detectable moiety. If the sample
contained the first antibody, the detectable third antibody will
bind to the support.
(Id. ) As with the labelled anti-analyte antibody in the indirect assay,
Southgate teaches using the labelled anti-binding partner antibody as a
separate assay component from other reagents. In light of this teaching of
Southgate, we agree with the Examiner’s conclusion that Southgate provides
support for a reagent kit that includes separated components of Hara for the
detection of hyaluronic acid.
Hara does not teach away from the claimed reagent kit
Appellants contend that Hara specifically teaches against separating
the two components that make up its reagent (Appeal Br. 14), using the
bound component in a “free-state,” and “relies on the benefit of a single two-
component reagent” which is an improvement in “simplicity” compared to
the prior art methods (Appeal Br. 16). Appellants further point out that Hara
“directs that the reagent/sample complex that forms is to be separated from
the uncomplexed reagent by ‘any known separation and analysis method
ex[c]ept for the . . . sandwich method,’” and, thus, Hara “forswears a
making the assertion that Southgate supports separating the components of
Hara. (Ans. 12.)
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sandwich assay format.” (Appeal Br. 16.) According to Appellants, because
Southgate’s methodology relies on sandwiching the analyte between an
antigen bound to a support and a labeled second antibody, the fact that
Southgate “used separate reagents would have neither suggested nor
motivated the modification of Hara to one of skill in the art.” (Appeal Br.
17.)
We do not find Appellants’ arguments persuasive. Hara teaches
against a sandwich assay that relies upon immobilizing a hyaluronic acid
binding protein to a solid support (Hara 138) because “hyaluronic acid
binding protein as a component of the reagent, is difficult to immobilize
quantitatively to a solid phase (an insoluble carrier) with a good
reproducibility” (Hara 1 3). Hara says nothing with respect to
immobilization of a hyaluronic acid binding protein antibody to a solid
phase. That is, to the extent Hara teaches away from anything regarding kits
for the detection of hyaluronic acid, it is limited to teaching away from
hyaluronic acid binding protein immobilized to an insoluble carrier. The
Examiner’s obviousness rejection does not rely on the presence of such a
reagent, but rather relies on a reagent that is an anti-hyaluronic acid binding
protein antibody immobilized to an insoluble carrier. Appellants do not
dispute that Mochida teaches that it was known to bind antibodies to carrier
particles either chemically or physically (Mochida 4:19—32, 1:60—67), and to
provide them as a reagent in a kit (Mochida 14 (Example 10)), or that Uylen
teaches physical adsorption is an equivalent method to chemical binding
(Uylen 4:9-17). Furthermore, as discussed above, Southgate teaches that it
was known to use an antibody to an analyte binding partner for detection of
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an analyte as a separate reagent from the analyte binding partner. (Southgate
31:39-49.) While the antibody to an analyte binding partner was not the
immobilized antibody, Southgate, like Mochida teaches that antibodies can
be bound to supports. (Id.) In other words, it is a reasonable conclusion
based on the foregoing teachings that one of ordinary skill in the art would
have known how to and would have found it obvious to immobilize the
antibody to an analyte binding partner of Hara to a support.
We also find that, while Hara teaches a hyaluronic acid binding
protein bound to an antibody to the binding protein as a single reagent, Hara
appears to acknowledge that it was known in the art to use a hyaluronic acid
binding protein as a separate reagent. (Hara 13.) Consequently, we
conclude that one of ordinary skill in the art would have known that one
could keep a hyaluronic acid binding protein separate from other binding
partners, whether they be hyaluronic acid or an antibody to a hyaluronic acid
binding partner.
We do not find the fact that Hara teaches away from providing the
hyaluronic acid binding protein as a separate reagent from a labeled anti-
hyaluronic acid binding protein or from attaching the labeled anti-hyaluronic
acid binding protein to a carrier because it teaches that a particular known
sandwich method in which a hyaluronic acid binding protein is immobilized
to a solid phase “lacks simplicity due to a composition of a plurality of
reagents” (Hara 13). A reference teaches away “if it suggests that the line
of development flowing from the reference’s disclosure is unlikely to be
productive of the result sought by the applicant.” In re Gurley, 27 F.3d 551,
553 (Fed. Cir. 1994). Hara’s comment that a particular sandwich assay
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method described in JP-B-06-41952 and JP No.2732718 that includes
immobilizing a hyaluronic acid binding protein to a solid phase does not
speak to whether a reagent kit containing Hara’s hyaluronic acid binding
protein composition as one reagent component and a labelled antibody to
hyaluronic acid binding protein as a second separate reagent component is
unlikely to be capable of use as a reagent kit for the measurement of
hyaluronic acid. Nor does it teach away from providing that labelled
antibody to hyaluronic acid binding protein supported on a carrier by
physical adsorption.
Claim 6 is directed to a reagent kit and not an assay and does not
include a limitation that requires “simplicity” of an assay. And, even if it
did, “[a] known or obvious composition does not become patentable simply
because it has been described as somewhat inferior to some other product for
the same use.” Id.\ see also In reMouttet, 686 F.3d 1322, 1334 (Fed. Cir.
2012) (“[J]ust because better alternatives exist in the prior art does not mean
that an inferior combination is inapt for obviousness purposes.”).
Reason to Combine the References
“In determining whether the subject matter of a patent claim is
obvious, neither the particular motivation nor the avowed purpose of the
patentee controls.” KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007).
“[T]he test [for obviousness] is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.” In re
Keller, 642 F.2d 413, 425 (CCPA 1981). Moreover, “[t]he combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” KSR, 550 U.S. at 416.
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As discussed above, the prior art teaches various reagents for use in
detecting analytes including an antigen to an analyte, and an antibody to the
antigen of an analyte as separate reagents. (Southgate 31:39-49.) The prior
art also teaches that it was known to use as a reagent in an agglutination
reaction an antibody bound to a carrier (Mochida 8:3—49), as well as to
provide kits for detection of analytes that include two separated reagents
(Mochida Example 10).
Moreover, the prior art teaches that it was known to use both a
hyaluronic acid binding partner and an antibody to the hyaluronic binding
partner as reagents for determining hyaluronic acid, as well as employing a
hyaluronic binding partner as a separate reagent from other compounds in
determining hyaluronic acid. (Hara 13,18.) And, the prior art teaches that
it is difficult to immobilize quantitatively a hyaluronic acid binding partner
to a support. (Hara 13.)
We conclude that, in light of these teachings, providing as a reagent
kit for the measurement of hyaluronic acid a first reagent solution that
includes a hyaluronic acid binding partner separate from a second reagent
solution that includes an antibody to the hyaluronic binding partner is simply
the combination of familiar elements according to known methods. Picking
one of a finite number of known solutions to a known problem is obvious.
KSR, 550 U.S. at 421 (“When there is a design need or market pressure to
solve a problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue the known
options within his or her technical grasp. If this leads to the anticipated
success, it is likely the product not of innovation but of ordinary skill and
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common sense. In that instance the fact that a combination was obvious to
try might show that is was obvious under § 103.”).
Appellants have not directed us to persuasive evidence of
unpredictable results in providing such a reagent kit. “[I]t is well settled that
unexpected results must be established by factual evidence.” In re De
Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). “Mere lawyer’s arguments and
conclusory statements in the specification, unsupported by objective
evidence, are insufficient to establish unexpected results.” In re Wood, 582
F.2d 638, 642 (CCPA 1978). The Specification does not provide any
comparative results of the claimed reagent kit as compared to the prior art.
Rather, the Specification provides comparative results of assays to measure
hyaluronic acid where
(1) latex particles sensitized with an anti-hyaluronic acid
binding partner monoclonal antibody and a hyaluronic acid
binding partner were used as reagents (Spec. 16—19 and 22
(Table 1 (second test solution))),
(2) latex particles sensitized with a hyaluronic acid binding
partner by chemical bond or physical adsorption were used as a
reagent (Spec. 20-21 and 22 (Table 1 (second test solution (1)—
(3) ))),
(3) latex particles sensitized with hyaluronic acid binding
partner through anti-hyaluronic acid binding partner
monoclonal antibody adsorption were used as a reagent (Spec.
21—22 (Table 1 (second test solution (4)))), and
(4) latex particles sensitized with an anti-hyaluronic acid
binding partner monoclonal antibody and a hyaluronic acid
binding partner were stored at 30 °C for 1 month and were used
as reagents (Spec. 23 and 25 (Table 2 (Example))).
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The fact that, in some experiments the sensitized latex particles were
stored first before use, whereas in others they were not, is not a
comparison of the sensitized latex particles and other reagents as a kit
against the prior art. Thus, the statement in Appellants’ Appeal Brief
that “separate reagents would provide a more stable reagent kit” is not
persuasive evidence of unexpected results of the reagent kit claimed.
Appellants argue that the allegation by the Examiner that the
references suggest the pending claims is based on hindsight because the art
did not recognize “that the extra effort of providing separate reagents would
provide a more stable reagent kit.” (Appeal Br. 18.) This argument is not
persuasive as it is not necessary that references be combined or modified for
the same reason Appellants arrived at the claimed invention. In re
Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996) (“[T]he motivation in the prior
art to combine the references does not have to be identical to that of the
applicant to establish obviousness.”)
For the foregoing reasons, we affirm the Examiner’s rejection of
claim 6 as being obvious over Mochida, Hara, Southgate, and Uylen.
Because our reasoning differs somewhat from the Examiner’s, though, we
designate this rejection as a New Grounds of Rejection.
Claims 7—9 have not been argued separately. (Appeal Br. 19
(“Although these claims recite further novel and unobvious features, the
dependent claims are allowable for at least the same reasons as independent
claim 6.”).) Claims 7—9 therefore fall with claim 6. 37 C.F.R.
§ 41.37(c)(l)(iv).
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SUMMARY
We affirm the rejection of claims 6—9 under 35 U.S.C. § 103(a) as
unpatentable over Mochida, Hara, Southgate, and Uylen. However, because
our reasoning differs to some degree from the Examiner’s regarding the
teachings of Southgate and its relevance to the obviousness of the claimed
reagent kit, we designate our affirmance as a New Ground of Rejection.
TIME PERIOD FOR RESPONSE
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new grounds of
rejection to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new Evidence relating to the claims so rejected,
or both, and have the matter reconsidered by the examiner, in which
event the prosecution will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same Record. . . .
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED. 37 C.F.R, $ 41.50(b)
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