Appeal No. 2003-1738 Page 4
Application No. 08/739,396
rejected claims, but reviewed Rava’s disclosure in great detail and concluded
that “the reference clearly anticipates the claimed invention.” See id., pages 3-5.
We disagree. The standard under § 102 is one of strict identity. “Under
35 U.S.C. § 102, every limitation of a claim must identically appear in a single
prior art reference for it to anticipate the claim.” Gechter v. Davidson, 116 F.3d
1454, 1457, 43 USPQ2d 1030, 1032 (Fed. Cir. 1997). See also Verdegaal Bros.,
Inc. v. Union Oil Co., 814 F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987)
(“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.”)
In this case, the examiner has pointed to various parts of the reference
that disclose aspects of prior art products and methods that seem to meet
isolated limitations of some of the claims on appeal. The examiner has not,
however, pointed to any part of the reference that discloses the method of
making a chemical array that is defined by instant claim 37; i.e., first attaching
each probe to a separate support, then dividing those probe-derivatized supports
into smaller pieces and using the pieces to make an array.
Since Rava does not identically disclose the claimed process, it does not
anticipate. The rejection under 35 U.S.C. § 102(e) is reversed.
2. Obviousness
The examiner also rejected all of the claims on appeal as obvious in view
of Rava. The examiner conceded that “[t]he reference do[es] not teach a method
of making an array of [a] plurality of different species of bioorganic molecules,
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