Appeal No. 2002-0795
Application No. 09/128,036
references as proposed, especially in view of the teaching away
from the claimed subject matter in the Cody reference.
As correctly argued by appellants (Brief, pages 3-4; Reply
Brief, pages 2-3), and admitted by the examiner (Answer, page 7),
Cody specifically teaches that the “final compounds should be
produced individually (not as mixtures) in soluble form.” Col.
2, ll. 47-49, italics added. Contrary to the examiner’s
assertion that this teaching of Cody is “a feature of the
apparatus, having nothing to do with the libraries made” (Answer,
page 7), we determine that this teaching of Cody is reiterated
throughout the disclosure of this reference as directly related
to the final libraries. Cody specifically teaches that the
method of making libraries includes “multiple, simultaneous
synthesis” of compounds (col. 2, ll. 29-30), involving an array
format to generate multiple compounds simultaneously (col. 3, ll.
18-20). Cody discloses that the final compound is formed at each
location in the array (col. 3, ll. 29-32), yielding a subset of
related, individual compounds (col. 4, ll. 54-57). Cody further
teaches that the number of reaction tubes equal the total number
of compounds to be synthesized (col. 13, ll. 4-9), with the final
compounds “individually tested for biological activity once they
are isolated” (col. 14, ll. 50-51). Accordingly, using mixtures
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