Appeal No. 2006-2493 Page 9
Application No. 10/126,122
We also recognize the examiner’s assertion (Answer, page 10) “that
C[arell] teaches on page 173 that his synthetic method is specifically designed to
produce compounds wherein ‘nearly all’ possess a unique molecular weight. . . .”
While it is true that Carell teaches (page 173, column 2), “[w]ith the help of a
simple computer program, the building blocks were grouped in sets such that
nearly all of the compounds produced from a given set would possess a unique
molecular weight,” a complete reading of the paragraph that includes this
statement reveals that the statement was made in the context of a “model
library.” Accordingly, we are not persuaded by the examiner’s intimation that
“nearly all” of the compounds present in the “screening libraries” taught by Carell
possess a unique molecular weight.
Lastly, we recognize the examiner’s conclusion (Answer, bridging
paragraph, pages 10-11) “that C[arell] teaches/makes obvious a library
comprising at least 250 compounds wherein each compound is different and
‘nearly all’ are expected to have a unique molecular weight . . . .” The library to
which the examiner relies on, however, is a “model library,” which as taught by
Carell is not screened and is used only to analyze the efficiency of the synthetic
reactions prior to the production of a larger “screening library.” As discussed
above these larger “screening libraries” are not mass-coded, and it fact Carell
expressly teaches that coding schemes were not used for the “screening library.”
Carell, page 172, first column.
were “mass-coded.” As discussed above, as we understand it, Carell expressly states that they
were not.
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