Appeal No. 2006-1095 Page 9
Application No. 10/280,188
We further note that appellants fail to point out in the briefs exactly how the
claimed limitations of: (1) “at least two electromagnetic modes of
propagation,” and, (2) “chemical or biological binding to the receptors
causes a change in the refractive index” distinguish over Boiarski’s explicit
disclosure of: (1) multimode light [col. 8, line 45], and (2) binding reactions
of antigens to antibodies that change the index [col. 5, lines 34-36]. We
find that the language of the claim reads upon these sections of Boiarski.
We further find that Boiarski’s disclosure of index changes that further
change (i.e., affect) the amount of light coupling between the waveguides
meets the language of claim 1 that requires “affecting the interaction of the
propagation modes.” See Boiarski at col. 5, lines 33-42:
When a sample containing antigens is added to the cavity 43 above the second
waveguide 41 coated with antibodies 44 a binding reaction of antigens to antibodies
occurs which changes the index of the coating 44 relative to the first superstrate 42.
This changes the amount of coupling of light which affects the relative intensity of
light P1, P2 emerging from each waveguide as measured by detectors and reflected in
the value of the ratio R. A change in the value of R can be correlated with the
concentration of antigens in the sample [emphasis added].
With respect to the issue of inherent anticipation, we note that “[i]n
relying upon the theory of inherency, the examiner must provide a basis in
fact and/or technical reasoning to reasonably support the determination that
the allegedly inherent characteristic necessarily flows from the teachings of
the applied prior art.” Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App.
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