Appeal 2007-1624
Application 10/424,662
location of the particles on the array and the type of oligonucleotide attached
to the particles are known.
48. The particles and their arrangement in a planar array produced by the
process of claim 90 are described by Drmanac (FF 20 and 23), including the
requirement of the claim that the location of the particles on the array and
the type of oligonucleotide attached to the particles are known3 (FF 24).
ANALYSIS
Anticipation requires a showing that each element of the claim is
identifiable in a single reference. See, e.g., Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375, 77 USPQ2d 1321, 1325 (Fed. Cir. 2005). As
described in detail above, Drmanac describes all the elements recited in
claims 76-81, 84-86, 88, 89, and 105-108 and therefore anticipates them.
Claim 90 is a product-by-process claim. “[E]ven though product-by-
process claims are limited by and defined by the process, determination of
patentability is based on the product itself.” In re Thorpe, 777 F.2d 695, 697,
227 USPQ 964, 966 (Fed. Cir. 1985). However, when the process steps
confer a structure or characteristic on the product which distinguishes it from
products made by other processes, the process steps should be considered.
See, e.g., In re Garnero, 412 F.2d 276, 279, 162 USPQ 221, 223 (CCPA
1979). In this case, the array of oligonucleotides produced by the claimed
steps of providing and transferring particles to a substrate results in an array
3 This aspect would also be inferred from Drmanac’s disclosure that the HA
can be “reused as classic filters” (FF 22; Drmanac, at col. 7, ll. 37-39). Once
the HA is used once, and the particles in it are detected, the position of the
particles and the oligonucleotides attached to the HA would be known.
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