Appeal No. 2005-1216
Application No. 10/117,453
subsequently bonded to the substrate 11.” Specification, p. 16. The specification is
silent as to the removal of said islands. Accordingly, we find that one skilled in the art
would understand that the islands may be permanently or non-removably bonded to the
substrate.
Thus, even though the specification as originally filed does not describe the
claimed invention en haec verba, we find that it nevertheless conveys “with reasonable
clarity to those skilled in the art that . . . [the inventor] was in possession of the
invention.” Vas-Cath Inc. v. Mahurkar, 935 F.2d at 1563-64, 19 USPQ2d at 1117.
Accordingly, Rejection I is reversed.
II. and III. Anticipation in view of Hillenkamp I and II
The examiner argues that Hillenkamp II discloses a sample holder
. . . with non-removable pin tools (islands) of various configurations. See figures
10-12B. The pin tool tips serve as sample support surfaces wherein reagents
may be attached for further analysis. Further, the pins are separated by
recessed areas (sumps). The sample containment region (sample support
surface) measures from 10 to 500 :m. While, the size of the pins can be
modified (4-800 microns across x 100 microns in depth). See column 6[,] lines
39-41 and column[s] 11-12. The pin tool tips can be designed in non-uniform or
irregular configurations. See Figure 11. Several reagents for attachment are
disclosed (including beads/reactants/nucleic acids). See column 10[,] line 63
through column 11[,] line 20. Nucleic acid sequencing of the pin tool is identified
via MALDI mass spectrometry. Column 10[,] lines 36-38. [Answer, p. 5].
In response, the appellants argue that Hillenkamp II is not available as prior art.
Brief, p. 6. The appellants further argue that the § 102(e) date of Hillenkamp II is
September 19, 1997; whereas, the present application has a priority date of June 26,
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