Appeal 2007-1689
Application 10/431,627
We agree with the Examiner’s findings of fact from the disclosures of
Penhasi and Bardman, and the application thereof to the elements of claim 1
(Answer 4-6).
Appellants do not dispute the Examiner’s findings but contend the
preambular language “for automated polynucleotide synthesis” defines the
invention and thus is a claim limitation which when coupled with the
required “dry box capable of forming a seal over a synthesis platform of an
automated polynucleotide synthesizer” in the body of the claim, excludes
protein and polypeptide synthesizers; Penhasi and Bardman are non-
analogous art to the claimed invention; and thus, that the Examiner has not
established motivation and a reasonable expectation of success necessary for
a prima facie case of obviousness (Br. 5-9). Appellants’ basis for each of
these contentions with respect to Penhasi is the difference in chemical and
biological affect between polynucleotides, which can be synthesized with
the claimed apparatus encompassed by claim 1, and the proteins and
polypeptides which can be synthesized by the apparatus disclosed by
Penhasi; and with respect to Bardman is that the reference is drawn to
synthetic resins which are not polynucleotides (Br. 5-7; Reply Br. 3-7).
Thus, with respect to Penhasi, Appellants contend the reference is not in the
field of endeavor involving the synthesis of polynucleotides, and because
“the chemistries for peptide sequencing and/or synthesis are entirely
different from the one for polynucleotide synthesis . . . one skilled in the art
would not look to Penhasi for any teaching relevant to polynucleotide
synthesis” (Br. 5-6; Reply Br. 4-7).
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