Appeal No. 2006-1547 Page 16
Application No. 10/114,668
Kosak clearly covers beads and particles that are not dry, but which comprise an
aqueous fluid component.
None of the cited secondary references make up for this clear deficiency. Yu is
cited for its disclosure of dried arrays comprising oligonucleotide primers (e.g., ¶ 105),
and the same can also be found in Ulfendahl (e.g., column 10, line 66). However, the
claims include, in addition to the oligonucleotide primers, the polymerase enzyme and
dNTPs. To establish obviousness, there must be some teaching, suggestion, or
motivation to combine the references. In re Rouffet, 149 F.3d 1350, 1355-1356 (Fed.
Cir. 1998). The examiner provided no motivation with expectation of success to have
air-dried the polymerase and dNTPs, side-by-side with the oligonucleotide primers.
Thus, we reverse the rejection as to claims 8-11 and 19-28. However, a new ground of
rejection of these claims is set forth below pursuant to 37 C.F.R. § 41.50.
Group III, claims 29-38
Claims 29-38 (Group III) were separately argued by Appellant because they
recite an active step in which a DNA polymerase and other DNA synthesis reagents are
applied to a DNA primer array by pulse-jet deposition. Appeal Brief, page 21. In
contrast to claims 1-28 which recited the limitation that the polymerase was a “pulse-jet
deposited polymerase,” the Group III claims expressly require an active step of pulse-jet
deposition.
Shipwash
Claims 29-38 were rejected under 35 U.S.C. § 103 as unpatentable over Kosak
in view of Yu, and further in view of Shipwash.
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