Appeal 2007-1624
Application 10/424,662
beads and then sorting the beads to determine which contain bound target
DNA (FF 6).
We do not see any disclosure in Fodor that describes or suggests
placing the beads in a planar configuration on a substrate as required by
claims 76 and 77. In the DNA chip embodiment, the positional attachment
of oligonucleotides to the solid substrate surface is necessary to determine
which sequences are present in the target DNA (FF 9). However, as argued
by Appellants (Br. 5), Fodor does not describe positional attachment as a
way of determining sequence binding when beads are used. Instead, Fodor
states that the sequence specificity of the bead is determined by information
encoded directly in the bead, itself (FF 5, 7). Thus, the fact that in the first
embodiment the oligonucleotides are attached to a solid support in a planar
configuration does not imply or suggest that the beads are arranged in the
same configuration.
The Examiner asserts that Pirrung, referenced in Fodor, describes
particles on an upper surface (Answer 7-8). At column 26, lines 11-45,
Pirrung describes determining signal detection capability of fluorescent
beads. “One of the beads was placed in the illumination field on the scan
stage . . . in a field of a laser” (FF 10). The laser beam was directed at the
bead and the resulting fluorescence was measured (FF 11). This example
was for the purpose of demonstrating signal capability. The bead utilized in
the assay described at column 26 of Pirrung did not contain attached DNA
and was not arranged with other particles to form an oligonucleotide array
(FF 12). There is no teaching in Pirrung that the particles with attached
DNA be arranged on a substrate in a planar configuration (FF 12), as
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