Appeal No. 2004-2079 Page 6
Application No. 09/754,958
bond, is not fluorescent, thus it is unclear how moiety “B” allows cleavage of a
fluorescent conjugate, as set forth in claim 17.
Nevertheless, as it relates to a compound comprising the structure “A-B-
D-”, moiety “B” is a linker allowing cleavage for liberation of D - a bond.
Accordingly, based on this interpretation of claim 17, the claim comprises a solid
support attached to a linker that allows cleavage for liberation of a bond. This
appears to be inconsistent with the statement in the specification (page 1, first
paragraph),
The present invention relates to the field of ultra high-throughput
screening on the solid support and in homogeneous solution by a
novel generic labeling technology. The new labeling technology is
based on new chemically stable fluorophores, which possess
reactive chemical functionalities for attachment to a solid support
and subsequent start of combinatorial synthesis of compound
libraries.
There is no requirement in claim 17 that compounds comprising the structure “A-
B-D-” contain a fluorophore. While other interpretations of the claim may be
possible, they would only serve to emphasize that the claim is indefinite. For
example, as discussed infra, the structures recited in claim 19 (“A-B-C-D'-E,” “A-
B-E-C,” “A-B-E-D'-C,” and “A-B-D-E-C”) open the scope of claim 17 to read on
internal modifications to the structures of formula II and formula III. As set forth,
infra, appellants have provided no precedent to support such a modification of
the structures set forth in claim 17.
“Open-ended” recitations:
In this regard, we note that the recitation of formula II and formula III as
they appear in claim 17 are inconsistent with the description of formula II and
formula III as they appear on pages 7 and 8 of appellants’ specification.
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