Appeal No. 2006-2493 Page 8
Application No. 10/126,122
The examiner appears to come to terms with the fact that the only mass-
coded libraries taught by Carell were “model libraries,” but nonetheless asserts
(Answer, page 9), the “model libraries” are representative of the screening
libraries taught by Carell. However, as appellants’ explain (Brief, bridging
paragraph, pages 4-5, emphasis removed) that Carell’s
model libraries are merely a tool for analyzing the efficiency of the
synthetic reactions. Carell suggest no other use for them. More
specifically, Carell makes no suggestion to use a mass encoded
library in a screening assay where the mass of a library member is
used to identify a library member that binds to a target.”
As Carell expressly teaches (page 172, first column), “[a]s our libraries were not
made sequentially on a solid support, we were unable to make use of available . .
. coding schemes . . . .” Therefore, we disagree with the examiner intimation that
the “screening libraries” taught by Carell are mass-encoded like the smaller
“model libraries.”2
We recognize the examiner’s assertion (Answer, page 9), “[t]he mere fact
that C[arell] does not teach screening using his model libraries does not mean
that they could not be used in such a method.” Carell, however, provides no
suggestion or motivation to do so. In contrast, as discussed above, Carell
expressly steps away from the use of a coded library in favor of “the broadened
scope of organic reactions available in solution-phase chemistry.” Carell, page
172, first column.
2 For the same reasons, we disagree with the examiner’s assertion (Answer, page 10), “[a]s
C[arell] teaches making his larger libraries using the same methodology as that for his model
libraries, appellant’s [sic] argument that the larger libraries of C[arell] would not have similar
characteristics to his model libraries is merely an assumption and is not supported by the facts.”
To the contrary, while it is true that Carell used the same reaction chemistry in the model libraries
as in the larger libraries, there is no evidence on this record that the larger “screening libraries”
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