Appeal 2007-1624
Application 10/424,662
§ 112, first paragraph, as failing to comply with the written description
requirement (Answer 3).
The Examiner contends that there is no support in the Specification
for the phrase “a contiguous aliquot of solution containing analytes” which
was added by amendment to claim 77 (Answer 3). According to the claim,
the aliquot is “placed on said planar configuration” of the oligonucleotide
array.
Appellants contend that Example IV, pages 25-27, of the
Specification describes “a contiguous liquid phase,” and when read along
with Fig. 6, provides support for the phrase (Br. 4).
We agree with Appellants. As conceded by the Examiner, the
Specification describes a liquid phase that is contiguous with the array
(Answer 3). The Examiner asserts that a “contiguous liquid phase” is
different from a “contiguous aliquot of solution,” but does not explain the
difference (Answer 3-4). In our opinion, there is none.
An “aliquot” is defined as a “definite part of a whole.”2 In Example
IV, drops of a solution – which can be characterized as “parts” of the
solution or “aliquots” – are deposited on the substrate (Spec. 25: 23-32).
The droplets are fused to form a “contiguous liquid phase” (Spec. 26: 5-8) of
the solution. Thus, the Specification describes contiguous droplets (the
“aliquot”) in contact with the oligonucleotide array, providing support for
the phrase “a contiguous aliquot of solution containing analytes.”
The Examiner also contends that there is no support for the phrase
“hybridize . . . under appropriate conditions” which was added by
2 The Random House College Dictionary 35 (1982).
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