Appeal 2006-2801
Application 09/989,684
II. Claims 15-24 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Virtanen.
ISSUE
The Examiner contends that Virtanen describes optical discs adapted
to be read by an optical reader that anticipate the claimed invention. The
Examiner contends that Virtanen discloses that an analyte binds to
predetermined locations on the optical disc and that the analyte is detected
by the optical reader (Answer 4).
Appellants contend that Virtanen does not teach or suggest
quantifying particles as required in claim 77. Appellants further contend
that Virtanen does not teach or suggest an optical disc wherein particle
agglutinants may be quantified by determining the amount of the tracking
grooves that are at least partially covered by particle agglutinants as
specified in claims 9 and 78 (Br 9-10).
The issue before us is whether Appellants have shown that the
Examiner erred in rejecting claims 9, 12, 25-31, 77, and 78 under 35 U.S.C.
§ 102(b). This issue turns on whether the Examiner has established a
reasonable belief that the property or characteristic recited in the claims
would have been inherent to the product of Virtanen, and, if the Examiner
met his initial burden, whether the Appellants have adequately rebutted the
Examiner’s position by showing that the characteristic or property is not
possessed in the cited reference. Specifically, the issue is: Does the optical
disc described in the prior art contain areas where agglutinants can be
determined through the use of optical readers? We answer this question in
the affirmative.
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