Appeal No. 2001-0692 Page 7
Application No. 09/163,572
in a particular row or column of the array are then used to generate DNA probes
corresponding to part of the DNA in each cosmid. See the legend to Figure 2.
The pooled probes are then applied to all of the cosmids in the array and
cosmids that hybridize to one of the mixed probes are identified. When the
results of hybridization to a particular row and column are compared, cosmids
that hybridize to both sets of mixed probes are identified as having DNA
sequence that overlaps the DNA sequence of the cosmid clone that is common
to both sets of probes. For example, in Evans’ Figure 2, the mixed probes
corresponded to the second row of the matrix (in the left-hand plate) and the
fourth column of the matrix (in the right-hand plate). A single cosmid (marked
with an arrow) hybridized to both sets of mixed probes. Thus, this cosmid was
identified as containing a DNA sequence that overlapped the DNA sequence of
the cosmid common to both probe sets, i.e., the cosmid located in the second
row, fourth column.
This method meets all of the limitations of instant claim 1, including any
limitations arising out of the claim’s preamble. Claim 1 is directed to a method of
“simultaneously testing a plurality of compounds for activity in a screen which is a
biological assay to determine the biological activity of the compounds.” Claim 9
makes clear that such activities include “the ability of compounds to hybridize to
a library of genes.” Evans discloses a method of simultaneously testing a
plurality of nucleic acid probes for the ability to hybridize to a library of cloned
DNA segments, which would be expected to include genes.
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