A proposed modification that would render the reference unsuitable for its intended use cannot be used to render a claim obvious

BPAI Case

Ex parte PAUL K. WOLBER,
ROBERT H. KINCAID, DOUGLAS AMORESE,
DIANE ILSLEY-TYREE, ANDREW S. ATWELL,
MEL N. KRONICK, and
ERIC M. LE PROUST,
Appeal 2009-2252
Application 11/008,6031
Technology Center 1600
Decided: April 24, 2009

Claim at issue:
1. A method comprising:
(a) subjecting an array comprising a plurality of features, each comprising nucleic acids immobilized on a surface of a solid support via a cleavable domain having a cleavable region, to conditions sufficient to generate a solution phase composition of nucleic acids;

(b) contacting said solution phase composition of nucleic acids with one or more reactants to produce a mixture of product nucleic acids; and

(c) contacting said product nucleic acids with an addressable array of probe nucleic acids.

The Examiner alleged that the claims were obvious based upon the combination of the two references. The appellants argued that the primary reference required an element that if modified would have made the invention unsatisfactory. The Board agreed with the appellants explaining:

"Thus, while [the primary reference] does not require the capture probes to be covalently linked to the affinity matrix, the Examiner has not explained why one of ordinary skill in the art would have attached the capture probes of Lipshutz to its affinity matrix with a technique which allows for the capture probes to be released from the affinity matrix during use due to competitive hybridization between the complementary nucleic acids in the matrix array and the complementary nucleic acids in the sample."

Therefore, the invention was not obvious because "Appellants have shown that the Examiner's proposed modification of the affinity matrix of Lipshutz by Nallur would render the affinity matrix of Lipshutz unsuitable for its intended use."

Full opinion can be found here.