Appeal No. 2006-2493 Page 3
Application No. 10/126,122
Claims 1-7, 9 and 10 stand rejected under 35 U.S.C. § 103 as being
unpatentable over the combination of Hsieh, Jindal, and Carell.
Claims 1, 2, 5, 6, 8, 9 and 11 stand rejected under 35 U.S.C. § 103 as
being unpatentable over the combination of Van Breeman and Carell.
We reverse.
DISCUSSION
The combination of Hsieh, Jindal and Carell:
Claims 1-7, 9 and 10 stand rejected under 35 U.S.C. § 103 as being
unpatentable over the combination of Hsieh, Jindal, and Carell.
According to the examiner (Answer, page 4), Hsieh
“teaches identification of members of a small molecule library
as ligands for target biomolecules, specifically proteins, by
allowing complexes between the biomolecule and library
members to form in solution, separating complexes from
unbound library members by passing the mixture over a size-
exclusion chromatography column, dissociating the
complexes, and identifying the ligands by mass spectrometry.
. . .”
The examiner finds (Answer, pages 4-5), however, that Hsieh does not
teach the requirements of claim 1 step (a) wherein the “mass-coded
molecular library’ comprises “compounds of the general formula XYn,
wherein n is an integer from 2 to about 6” and “wherein each of at least
about 90% of the combinations of n peripheral moieties has a molecular
mass sum that is distinct from the molecular mass sum of all other
combinations of n peripheral moieties.” In addition, the examiner finds
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