Appeal No. 2001-0692 Page 9
Application No. 09/163,572
[In Evans], the libraries were not known nor [were] the RNA probes known at the
time the testing was performed. Clearly this is a process that has no relationship
to the screening of [a] large library of known compounds as called for in claim 1.”
Appeal Brief, page 7.
This argument is not persuasive. Claim 1 is not limited to a process of
screening a large library or database of known compounds. As discussed above,
the claim language is broad enough to encompass the hybridization assay
method disclosed by Evans. Since claim 1 reads on the method disclosed by
Evans, and Evans is prior art, claim 1 is anticipated.
Appellants also argue that they submitted a declaration under 37 CFR
§ 1.132 , which provided evidence that “the invention in the present case is not
disclosed in Evans.” Appeal Brief, page 6. The examiner, however, stated that
the declaration was not considered because it was not timely submitted.
Examiner’s Answer, page 8. Appellants “respectfully traversed” the examiner’s
position, on the basis that the declaration had been entered during prosecution of
the application that was the parent of the present application, and therefore
should have been considered in this application as well. See the Reply Brief,
page 4.
We decline to consider Appellants’ arguments based on the Brussolo
declaration, however, because the declaration was submitted after the final
rejection and the examiner refused to enter it. See the Examiner’s Answer, page
8. Appellants did not petition to have the examiner’s decision reversed, and this
board has no authority to review such decisions. See Manual of Patent
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