Appeal No. 2006-1547 Page 9
Application No. 10/114,668
particular format or structure, but has been construed to include an array where the
distinct locations are physically separated, including, e.g., “raised structures or walls
arising from the surfaces of the array.” Specification, page 8, ¶ 34. The primers “were
bound to microtitre plate wells” and other reactants, including the polymerase, were
added as fluid drops to the wells. Ulfendahl, column 7, lines 30-50. The term
“immobilized” has been construed broadly to include these types of reactant
localization. Therefore, the microtiter well array disclosed in Ulfendahl fulfills the
requirement in claim 1 for an “array of … distinct DNA primer compositions immobilized
on a surface of a solid support at distinct locations.”
Each individual well described in Ulfendahl contains, for instance, buffer, dNTPs,
fluorescent labeled dCTP, and DNA polymerase. Ulfendahl, column 7, line 35-column
8, line 35; column 10, lines 20-25. Thus, the DNA polymerase is at distinct regions on
the solid support, i.e., in a well. This arrangement satisfies the claim requirement that
the “pulse-jet deposited polymerase” is immobilized at distinct locations on the solid
support.
This conclusion is not changed by our agreement with Appellant that the
polymerase described in Ulfendahl is not “pulse-jet deposited.” The latter limitation has
been construed to restrict the geographical location of the polymerase, but to affect no
other characteristic of it. “Once the examiner provides a rationale tending to show that
the claimed product appears to be the same or similar to that of the prior art, although
produced by a different process, the burden shifts to applicant to come forward with
evidence establishing an unobvious difference between the claimed product and the
prior art product.” In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983).
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