Appeal No. 2006-0103 Page 6
Application No. 10/172,892
down on the cover slip, i.e. the surface having the microarray probes deposited thereon
faces the cover slip. The cover slip and the substrate slide can be pressed tightly
against each other to squeeze out the air bubbles from the interface between the slide
and the gasket (FIG. 19b). Before hybridization, the entire assembly is inverted to
position the microarray substrate underneath the cover, thereby allowing the target fluid
to contact the array of probes, as shown in FIG. 19c.” Page 11, paragraph [0163].
Chen does not describe the disclosed gasket as one that is formed from a liquid
material deposited on a surface and allowed to cure, which is Appellants’ definition of a
form-in-place gasket. However, “[t]he patentability of a product does not depend on its
method of production. If the product in a product-by-process claim is the same as or
obvious from a product of the prior art, the claim is unpatentable even though the prior
product was made by a different process.” In re Thorpe, 777 F.2d 695, 697, 227 USPQ
964, 966 (Fed. Cir. 1985).
“Where a product-by-process claim is rejected over a prior art product that
appears to be identical, although produced by a different process, the burden is upon the
applicants to come forward with evidence establishing an unobvious difference between
the claimed product and the prior art product.” In re Marosi, 710 F.2d 799, 803, 218
USPQ 289, 292-93 (Fed. Cir. 1983). The product-by-process limitation of the instant
claims does not appear to distinguish the apparatus used in the claimed process from
that used in the prior art. We therefore agree with the examiner that the method
disclosed by Chen meets all the limitations of claims 1, 10, and 17.
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