Appeal No. 2006-1547 Page 13
Application No. 10/114,668
of success. See In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970);
In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1443 (Fed. Cir. 1991).
The primary objection raised by Appellant was that neither Kosak, nor any of the
secondary references, disclosed or suggested a “pulse-jet deposited polymerase” as
required by claim 1. See e.g., Appeal Brief, page 17, lines 3-5; page 18, lines 2-5. As
urged for the anticipation rejection, Appellant stated that patentable weight must be
given to it. Id., page 18, lines 7-10.
We agree with the examiner’s determination that Kosak in combination with the
secondary references (Nikiforov and Yu) are sufficient to establish a case of prima facie
obviousness. The primary reason for our concurrence is the teaching in Kosak of a
DNA polymerase and primers present in a liposome or wax bead, commingled with
other components of a primer extension or polymerase reaction. See e.g., Kosak,
column 14, lines 35-60. The wax beads can be arrayed in a 96-well microtiter plates.
Id., column 13, lines 24-27; column 28, lines 45-48. Kosak clearly discloses DNA and
RNA polymerases entrapped in a liposome or wax bead (e.g., column 5, line 13-38) and
then placed at distinct locations (e.g., column 13, lines 9-27) as required by claim 1 and
others. (The primers are not covalently attached to the plate surface, but we have
construed the claims not to require this.) Appellant’s contention is that Kosak do not
describe a pulse-jet deposited polymerase. Brief, page 18. However, it is not
necessary that the polymerase be pulsed-jetted into the array in order to satisfy the
claim limitation.
To the extent that Kosak does not describe arrays of “at least two distinct primer
compositions” or other individual limitations recited in the dependent claims, the
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