Appeal No. 2006-1569 Page 6
Application No. 10/159,997
anticipated only if each and every element as set forth in the claim is found, either
expressly or inherently described, in a single prior art reference.”). In this case, we
agree with Appellants that the method disclosed by Honkura does not meet all the
limitations of the instant claims.
As Appellants have pointed out, the instant claims require a first step of “mapping
mRNA sequences of an mRNA sequence dataset to genomic sequences of a genomic
DNA sequence dataset.” The examiner has pointed to no disclosure in Honkura of a
step of comparing the sequences in an mRNA sequence dataset to the sequences in a
genomic DNA sequence dataset, and no such disclosure is apparent to us.
We do not find persuasive the examiner’s argument that steps (a) and (b) of the
claimed method are anticipated because they are akin to product-by-process claims.
See the Examiner’s Answer, pages 9-10. Instant claim 1 is directed to a process, not a
product. Therefore, it is not anticipated by a different process that was known in the art,
even if the known process produced the same end product.
The rejection of claim 1 as anticipated by Honkura is reversed.
4. Obviousness
The examiner rejected claims 1-4 under 35 U.S.C. § 103 as obvious in view of
Honkura and Sun.2 The examiner relied on Honkura as teaching the basic method of
claim 1 and cited Sun for teaching limitations related to cancer cells and nonsense-
mediated decay (recited in claims 2-4).
2 Sun et al., “Nonsense-mediated decay of glutathione peroxidase 1 mRNA in the cytoplasm depends on
intron position,” The EMBO Journal, Vol. 19, pp. 4734-4744 (2000)
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