Appeal 2007-1627
Application 09/870,009
portion, a non-gene portion, and a non-naturally occurring sequence
embedded in the non-gene portion. DNA is a chemical compound. The
claims’ recital of DNA comprising a gene portion and a non-gene portion
indicates that the recited portions are parts of the same DNA molecule.
By contrast, the Examiner has at best established that Lizardi and
Arnot disclose hybridization complexes in which a gene and a non-naturally
occurring sequence are present on separate DNA molecules. Hybridization
of a probe to its genomic target does not make the probe and the genomic
target parts of the same DNA molecule. Nor does hybridizing a probe to its
target “embed” the probe sequence into the target DNA, in the usual sense of
merging two separate molecules into a single molecule. The probe DNA
and target DNA are separate DNAs even if they are hybridized to each other
under appropriate conditions.
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631
(Fed. Cir. 1987). The Examiner has not established that Lizardi or Arnot
disclose DNA comprising all of the limitations of the claims on appeal. The
rejection of claims 5, 8-12, 15, 17-27, and 30-34 under 35 U.S.C. § 102(b) as
anticipated by Lizardi, and the rejection of claims 5, 8-11, 15, 17-27, 30, and
34 under 35 U.S.C. § 102(b) as anticipated by Arnot, are reversed.
SUMMARY
We affirm the rejection of claims 8-10 under 35 U.S.C. § 112, second
paragraph, and the rejection of claims 5, 8-12, 15, 17-27, and 30-34 under 35
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