Appeal No. 2006-1547 Page 15
Application No. 10/114,668
claims 1-7, 12 and 14-16 as being obvious over Kosak in view of Yu; claim 13 as being
obvious over Kosak in view of Nikiforov, and further in view of Shipwash; and claim 13
as being obvious over Kosak in view of Yu, and further in view of Shipwash.
Group II, claims 8-11 and 19-28
In the Brief, Appellant distinguished claims 8-11 and 19-28 (Group II) from the
other claims in the application since these included the claim limitation that the array
was “in a dry, storage stable format.” Appeal Brief, page 13. Although the limitation
was present throughout prosecution, the examiner did not expressly address it, even
though dependent claim 8 and independent claim 19 recited it. Not until the Appeal
Brief was filed did Appellant first argue that the “dry, storage stable format” was absent
from the prior art. In response to it, the examiner alleged that the “wax coated reagents
[disclosed by Kosak] are a dry, stable storage format.” Answer, page 31, lines 5-10.
Appellant dismissed this explanation, pointing to the specification where the claimed dry
format was defined as “not being fluid compositions.” Reply Brief, paragraph spanning
pages 7-8.
We agree with Appellant that the wax beads or particles described in Kosak are
fluid, and therefore do not satisfy the claim limitation as alleged by the examiner. For
example, the product is described as a “liquid heat-releasable reagent coated with a
waxy polymer.” (Underlining added.) Id., column 12, lines 56-60. See, also column 2,
line 65-column 3, line 1. Kosak also discloses a heat-releasable liposome which is
defined as “a lipid bilayer membrane that completely encloses an aqueous space.”
(Underlining added.) Id., column 7, lines 5-10. Reagents, including DNA polymerase
and dNTP’s, can be entrapped within it. Id., column 9, lines 3-15. The description in
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