Appeal No. 2006-1547 Page 8
Application No. 10/114,668
Ulfendahl describes methods for identifying and characterizing organisms based
on differences in their DNA. Generally, these methods are known as DNA
fingerprinting, because each organism has a different DNA sequence that is analogous
to how fingerprints differ between individuals. In the specific methods described in the
Ulfendahl patent, DNA primers (“probes”) are immobilized to a substrate, hybridized to a
matching a nucleic acid, and then subjected to enzyme extension using a DNA
polymerase (where the DNA probe serves as a primer for extension of a DNA strand
complementary to the DNA probe). See, Ulfendahl, Fig. 1. The primer extension
product is detected. Id., column 8, lines 14-35. These features are pointed out in the
Answer (e.g., pages 6-7), and undisputed, except for one aspect. Appellant argues that
the claimed invention is distinguished over Ulfendahl because the latter does not “teach
or disclose a DNA composition containing a pulse-jet deposited polymerase.” Appeal
Brief, page 15, lines 7-8.
Anticipation under § 102 requires a showing that each limitation of a claim is
found in a single reference, either expressly or inherently. Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1369, 77 USPQ2d 1321, 1325 (Fed. Cir. 2005). We agree with
the examiner’s determination that Ulfendahl’s U.S. Pat. No. 6,280,954 discloses the
limitations set forth in claims 1, 3, 4, 12, 16-18, and 39, meeting the requirements for
anticipation.
Example 1 of Ulfendahl describes a primer extension method performed in a
microtiter well plate. Id., column 7, lines 3-35. The latter is essentially a flat plate
having a plurality of physically separated depressions that form small wells in which
reactions can occur. The array recited in appealed claim 1 is not limited to any
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