Appeal No. 2001-1880
Application No. 09/273,835
the carbon, nitrogen, or hydrogen atoms, be labeled with an isotope. We also find that
appellant's stable isotope labeled nucleotides, as claimed, are limited to those
nucleotides labeled with 13C, 15N and/or 2H. Specification, page 6.
With this claim interpretation in mind, we review the prior art rejections made of
the application.
35 U.S.C. § 102
Claims 1-4, 6-10 and 13 stand rejected under 35 U.S.C. 102 as anticipated by
Arlinghaus.
A claim is anticipated only if each and every element as set forth in the claim is
found, either expressly or inherently described, in a single prior art reference.”
Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed.
Cir. 1987). “It is also an elementary principle of patent law that when, as by a recitation
of ranges or otherwise, a claim covers several compositions, the claim is ‘anticipated’ if
one of them is in the prior art.” Titanium Metals Corp. of America v. Banner, 778 F.2d
775, 782, 227 USPQ 773, 779 (Fed. Cir. 1985).
The examiner, in the Answer at pages 3-5, has indicated where each of the
claimed steps is disclosed in the Arlinghaus reference. Arlinghaus (abstract) teaches a
“DNA sequencing, mapping, and diagnostic process which includes the steps of
labeling nucleotide segments or peptide nucleic acids (PNAs) with one or more atoms
of specific stable or long-lived radioactive isotopes of a selected element that do not
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