Appeal No. 2005-1234 Page 5
Application No. 09/749,752
piece as a photomultiplier. See Examiner’s Answer, pages 5-6. Moreover, the
examiner interprets “simultaneously” as encompassing multiple, sequential
manipulations. Thus, for example, with respect to the Zeleny reference, the
examiner asserts that the scanning in of information, opening a file folder, and
scanning a microarray image, while apparently acknowledging that those are
three continuous steps, “is all one step, albeit complex in nature directed to
microarray scanning,” which, he contends, “supports the instant rejection.” Id. at
12.
Appellants do not contest the examiner’s construction that “the means for
obtaining information concerning the positions of the probes to which the target
substance has bound” is a photomultiplier. Rather, appellants argue that the
examiner “seems to be asserting that ‘simultaneously’ means ‘requiring no
additional step,’” arguing that “[a]lthough the performing of two operations
simultaneously would logically follow that no additional steps are required to
perform those two operations, it does not necessarily mean that combining
multiple steps into one complex step would mean that the combined multiple
steps would be performed simultaneously.” Reply Brief, page 8. Appellants
contend that “the term ‘simultaneously’ recited in the appealed claims should
maintain its plain meaning, since the meaning of the term ‘simultaneously’ is
known to one of ordinary skill in the art.” Id.
Following the mandate of Donaldson, we look to the specification and
interpret the phrase “means for obtaining information concerning the positions of
the probes to which the target substance has bound and simultaneously
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