Appeal No. 2006-1547 Page 21
Application No. 10/114,668
New Grounds of Rejection under 37 C.F.R. § 41.50
New grounds of rejection are set forth below over claims 8-11 and 19-28. The
common feature of all these claims is the requirement that the array be in a “dry,
storage stable format.” Although the dry, stable format is a key feature distinguishing
dependent claim 8 and independent claim 19 from independent claims 1 and 29, only
several lines (page 31) were devoted to it in the 43-page Answer. This feature was
ignored until the appeal stage, indicating that proper attention to it had not been given
during prosecution.
Claims 8 and 9
Pursuant to 37 C.F.R. § 41.50, a new ground of rejection is made for claims 8
and 9 under 35 U.S.C. § 103 as being obvious over Ulfendahl in view of Yu and
Morozov8.
The disclosures of Ulfendahl and Yu have been discussed above and in the
Examiner’s Answer. Ulfendahl describes arrays comprising DNA primers, polymerases,
and precursor nucleotides, including dATP, dGTP, dTTP, and dCTP at distinct
locations. See, e.g., Ulfendahl, Example 1, columns 6-8. At least one of the
nucleotides is labeled (“Fl-dCTP”). Id., column 7, line 46. Thus, the primer composition
required in claim 8 is met. Divalent cations (magnesium) and buffering salts (Tris-HCl)
are present as required by claim 9. Id., column 7, lines 60-65.
8 Morozov et al. (Morozov) U.S. Pat. No. 6,787,313, issued Sept. 7, 2004 (cited on PTO-892, attached to
this decision)
Page: Previous 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 Next
Last modified: November 3, 2007