Appeal 2007-1689
Application 10/431,627
the claims is, as has long been established, a matter to be determined on the
facts of each case in view of the claimed invention as a whole.”).
On this record, we determine the Examiner has established a prima
facie case of obviousness of the claimed apparatus encompassed by claim 1,
as we interpret this claim, over the apparatus disclosed by Penhasi alone and
as combined with Bardman. We are not persuaded otherwise by Appellants’
contentions. The well known biological significance of polynucleotides and
of proteins and polypeptides is not at issue here. Indeed, the issue is whether
one of ordinary skill in the art of sequencing polynucleotides would have
recognized that Penhasi’s apparatus for sequencing proteins and
polypeptides is capable of performing the processes and reactions necessary
for polynucleotide synthesis. We determine this person would have
recognized that, like polynucleotide sequencing, the sequencing of proteins
and polypeptides requires sequentially building the polymer chain with
appropriate units in a prescribed pattern leading to a precise product. Thus,
as one of ordinary skill in this art further would have known, the need for a
controlled process environment ensuring the purity of the product at each
synthesis step is paramount. In this respect, the Examiner finds Penhasi’s
apparatus accomplishes these objectives without regard to the chemical
processing involved, and, in our opinion, properly concludes this apparatus
would have commended itself to the attention of one of ordinary skill in this
art even though it is in a related area of endeavor. See, e.g., In re Clay,
966 F.2d 656, 659-60, 23 USPQ2d 1058, 1060-61 (Fed. Cir. 1992).2
Indeed, Appellants do not contend there are aspects of the chemical
2 A reference is reasonably pertinent if, even though it may be
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