Appeal No. 2006-0258 Page 6
Application No. 09/755,747
appellant’s specification at page 24, line 12; necessarily or inherently result in a
bound monolayer of single DNA stands.4
According to appellant (Brief, page 9), “product literature for six (6)
different commercially available strepavidin-coated surfaces,” demonstrates that
a monolayer is formed according to the requirements of appellant’s claimed
invention. In this regard, appellant directs attention to (Exhibit 1), which
according to appellant (Brief, page 10), describes a streptavidin-coated product
produced by Dynal Biotech. Appellant asserts (id.), “[t]he excerpt explicitly states
‘[a]nalysis and close calculations show that the bead-coating consists of a
mon[o]layer of covalently coupled streptavidin.’” From this appellant asserts (id.,
emphasis removed), “the Dynal product is unquestionably a surface modified to
contain a monolayer of streptavidin.”
While we acknowledge appellant’s assertions, as we understand it, Exhibit
1 is directed to beads coated with “a monolayer of covalently coupled
streptavidin. . . .” The issue before us is not whether streptavidin is a monolayer
on streptavidin coated beads, but whether the disclosure in appellant’s
specification of microtiter plates in appellant’s specification provides support for
the term “monolayer” as it is used in the claimed invention. Exhibit 1 does not
address this issue, accordingly, we do not find Exhibit 1 persuasive.
4 Kennecott Corp. v. Kyocera Int'l, Inc., 835 F.2d 1419, 1422, 5 USPQ2d 1194, 1197 (Fed. Cir.
1987) (“By disclosing in a patent application a device that inherently performs a function,
operates according to a theory, or has an advantage, a patent applicant necessarily discloses
that function, theory, or advantage even though he says nothing concerning it.”)
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