Appeal No. 2006-1547 Page 7
Application No. 10/114,668
immobilized at a “distinct location” on the claimed primer array. Thus, we agree with
Appellant that the claim term is definite under § 112, second paragraph, and
accordingly, reverse the rejection of claims 1-28.
4. Anticipation under § 102
The examiner rejected claims 1, 3, 4, 12, 14, 16-18, and 39 as being anticipated
under 35 U.S.C. § 102(a) and (e) by Ulfendahl1; claims 1, 3, 4, 8, 14, and 16-18 as
being anticipated under § 102(b) by Ulfendahl-WO2; and claims 1-4, 6, 7, 12, and 14-16
as being anticipated under § 102(a) and (e) by Yu3.
Ulfendahl
Although it was stated in the Answer that the U.S. Patent and WO publication by
Ulfendahl have identical disclosures (Answer, page 6), the rejected claim groups were
different for each reference and no explanation was given. Claims 12 and 39 were
included in the rejection over the U.S. patent, but not the WO; Claim 8 was included in
the rejection over the WO, but not the U.S. patent. Appellant did not comment on this
discrepancy.
In setting forth the grounds of the rejection, the examiner only referred to
Ulfendahl’s U.S. Patent. In view of this, and because the examiner did not explain the
basis for the rejection of claim 8, we will consider the rejection only as it applies claims
1, 3, 4, 12, 14, 16-18, and 39 for the U.S. Patent.
1 Ulfendahl, U.S. Patent 6,280,954, issued Aug. 28, 2001
2 Ulfendahl (Ulfendahl-WO), WO99/39001 published Aug. 05, 1999
3 Yu et al. (Yu) U.S. Pub. Pat. App. No. 2001/0036632, published Nov. 1, 2001
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