Appeal No. 2006-1547 Page 19
Application No. 10/114,668
To accept Appellant’s argument, it would be necessary to construe the phrase
“DNA primer compositions immobilized on a surface of a solid support” to exclude
deposition into a gel on a solid support – the configuration described by Church. We
decline to make this construction for two independent reasons. The gel described in the
Church publication is present on the surface of a solid, such as glass. Church, ¶ 100.
In this arrangement, the polymerase is immobilized on the glass, i.e., by being present
in the gel which rests on the solid support. Our claim construction does not exclude this
configuration, even if the gel itself is not a solid support. For instance, the examples in
the specification include the deposition on to the solid support of the polymerase
suspended in a fluid – analogous to how gel is deposited on the glass in the Church
disclosure.
Secondly, the gel, itself, comprises a solid support. As defined in Church, a gel
is a semi-solid with both solid and liquid components. Id., ¶ 64, 82, 99. It is reasonable
that the polymerase, when deposited into the gel, would be in contact with at least some
of the solid components of the gel.
Appellant’s statement that the polymerase is “necessarily dispersed throughout
the array” is not persuasive since the deposition method, by their own admission, would
result in it being located at discrete positions. To the extent that diffusion would occur in
the matrix, resulting in the dispersion of the polymerase over time, the polymerase
would be initially localized to a distinct location, and that is sufficient to meet the claim
limitation. See, e.g., Exxon Chemical Patents v. Lubrizol Corp., 64 F.3d 1553, 1558,
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