Appeal No. 2006-1547 Page 10
Application No. 10/114,668
Giving the phrase “pulse-jet deposited polymerase” its broadest reasonable meaning,
the examiner properly rejected the claimed method over Ulfendahl (as well as the other
prior art discussed below), shifting the burden to appellant to distinguish it from, e.g., a
polymerase immobilized by other processes. Appellant did not provide any arguments
in rebuttal.
Finally, we note that the DNA primer composition of claim 1 is expressly
described to be present at a “distinct location,” and the polymerase is a component of it.
Since Appellant distinguished no other features of the claim from the prior art, we
affirm the anticipation rejection with respect to claim 1, 3, 4, 12, 14, 16-18, and 39.
Yu
As described in the Answer, Yu discloses a primer extension technology similar
to Ulfendahl where PCR is performed in situ on a microarray. Answer, pages 4-5; Yu, ¶
16. Once again, the only fact in dispute is whether Yu describes a “pulse-jet deposited
polymerase.” Brief, page 14. The examiner applied the rejection because “polymerases
are inherently capable of being deposited by pulse-jet or ink jet,” but made no finding
that the polymerase was restricted to a distinct location on the array as required by
other limitations in the claim. Answer, page 28.
Claim 1 requires that the “pulse-jet deposited polymerase” be immobilized at
distinct locations on the array. We can find no evidence in Yu or in the Answer that the
polymerase is so localized. To the contrary, it appears that it was distributed over the
entire array surface. Yu, ¶ 106-107. Anticipation requires a showing that each element
of the claim is identifiable in a single reference. Perricone v. Medicis Pharm. Corp., 432
F.3d 1368, 1369, 77 USPQ2d 1321, 1325 (Fed. Cir. 2005). In the absence of this
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