Appeal 2007-1624
Application 10/424,662
Rejection under § 112, second paragraph
Claim 79 stands rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite for failing to particularly point out and distinctly claim the
subject matter which applicant regards as the invention (Answer 4).
The Examiner contends that claim 79 “is indefinite for the recitation
‘the target oligonucleotides’ because the recitation lacks proper antecedent
basis in Claims 76 and 77” (Answer 4). Appellants do not address the
rejection in their Brief or Reply Brief. Accordingly, we summarily affirm
the rejection of claim 79 under 35 U.S.C. § 112, second paragraph.
Rejections under §§ 102 and 103
We consider the rejections over Fodor (Answer 4 and 9), Fodor as
defined in Pirrung (Answer 7), Fodor in view of Drmanac (Answer 11), and
Fodor in view of Eggers (Answer 13) together because each depends on the
correctness of the Examiner’s findings that Fodor describes particles
arranged on a substrate in a planar configuration as recited in both claims 76
and 77. As explained in more detail below, it is our opinion that that the
Examiner erred in her findings.
Fodor describes two embodiments for detecting nucleic acids. In the
first embodiment, different oligonucleotides are attached to the same solid
substrate at spatially defined positions (FF 1, 2). This configuration is now
generally referred to as a DNA or gene chip, where a single surface can have
as many as 3000 different oligonucleotides attached to it (FF 2). The second
embodiment described in Fodor uses beads for nucleic acid detection (FF 3).
In contrast to the DNA chip, each bead contains a single probe type (FF 4).
When beads are utilized, Fodor describes binding the target DNA to the
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