Appeal No. 2005-2663 Page 11
Application No. 10/140,323
and analyzing paths and pathways as directed to genetic interactions data
from DNA chip wherein said data is derived from disease state type of
perturbation data (pages 825-826, Introduction § and Figures 2, 3, 11, and
12). The said method comprises constructing graphs from data derived
from a plurality of databases wherein alias lists for the elements from said
plurality of databases (page 827, column 1, line 30 to column 2, line 19).
For example, SWISSPROT may be used for referencing protein coding
genes (page 826, column 2, lines 13-24), as in instant claims 1 and 9.
Examiner’s Answer, pages 7-8.
Appellant argues that Küffner does not anticipate because it does not disclose all
the limitations of the claims, pointing specifically to the “perturbation data” and
“adjacency list” limitations of the independent claims. See the Appeal Brief, pages 12-
15.
The standard under § 102 is one of strict identity. “[A]nticipation requires that all
of the elements and limitations of the claim are found within a single prior art reference.”
Scripps Clinic & Research Found. v. Genentech, Inc., 927 F.2d 1565, 1576, 18
USPQ2d 1001, 1010 (Fed. Cir. 1991). If a limitation of the claimed invention is not
present, either expressly or inherently, in the prior art reference, the claim is not
anticipated.
In this case, the examiner’s explanation of the rejection does not address many
of the limitations of claim 1. The examiner has pointed to Küffner’s “constructing graphs
from data derived from a plurality of databases.” Examiner’s Answer, page 7. This
might (or might not) represent a “graph representation of a genetic network” as recited
in claim 1. But the examiner has not explained where Küffner discloses “obtaining a
first accessibility list of [a] graph representation of a genetic network from appropriate
genetic perturbation data,” or “determin[ing] a condensation of the graph,” or “applying
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: November 3, 2007