Appeal 2007-2448
Application 10/192,352
The Examiner cites Kobylecki as disclosing “a method of making a
library of compounds using a segmentable support material comprised of a
particulate resin [and] a porous laminar material” (id. at 3). The Examiner
finds that Kobylecki’s method includes the steps of arranging a series of
reaction zones on sheets of the support material, producing a unique
oligomeric compound on each reaction zone, and then separating the
reaction zones from the material by cutting, each zone being provided with a
unique label that identifies the compound attached to it (id. at 3-4).
Appellants argue that, while Kobylecki discloses labeling the different
zones of the support material to indicate the identity of the biomolecules
attached to the zones, “[t]here are no ‘differently optically encoded beads
having biomolecules attached thereto, said biomolecules . . . identified by
said optical encoding . . .’” as required by claim 2 (Br. 5).
For a reference to anticipate a claim “[e]very element of the claimed
invention must be literally present, arranged as in the claim.” Richardson v.
Suzuki Motor Co., Ltd., 868 F.2d 1226, 1236 (Fed. Cir. 1989).
In the instant case, Kobylecki discloses a process in which a series of
unique oligomeric compounds are produced by sequentially attaching
monomers to a plurality of superposed paper sheets, followed by cutting the
sheets “in a fashion to provide individual pieces of paper, each of which is
marked with a single, unique index, which is in itself an identifier of the
establish the inherency of the van der Waals forces recited in claim 29,
which depends from claim 2 (Answer 5-6). Because the limitations of claim
2 are dispositive of the anticipation rejection, we do not discuss this
reference further.
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