Appeal 2007-3395
Application 10/260,733
Realizing this, the Examiner, for the first time,9 construes claim 1 as broad
enough to encompass a bacterial genome, which does not contain intronic
sequences (FF 44). However, Bao is directed to measuring gene expression
and chromosome abnormalities in the same tissue sample using array-based
CGH (FF 18). A unicellular bacterium cannot have multicellular tissues.
Hence, the Examiner's response is contradictory to the teachings of Bao.
Bao teaches a method using only two of the three genomic nucleic acid
samples required by the method of claim 1 (FF 22-24). Kuukasjärvi does
not cure the deficiencies of Bao. Since the Examiner has not established that
the prior art (Bao and Kuukasjärvi) teach or suggest all of the limitations of
claim 1, we will reverse the rejections of (i) claims 1-3, 5-7, 13-14, 18-25,
28-31, 34-41, 46, 54-58, 61-62 and 86 under § 103(a) as obvious over Bao
and Kuukasjärvi, and (ii) claims 47-49 under § 103(a) as obvious over Bao,
Kuukasjärvi and Bradley.
IV. Summary
In view of the record and for the reasons given, it is
ORDERED that the rejection of claims 1-3, 5-7, 13-14, 18-25, 28-31,
34-41, 46, 54-58, 61-62 and 86 under 35 U.S.C. § 103(a) as obvious over the
combined teachings of Bao and Kuukasjärvi is REVERSED;
FURTHER ORDERED that the rejection of claims 47-49 under 35
U.S.C. § 103 (a) as obvious over the combined teaches of Bao, Kuukasjärvi,
and Bradley is REVERSED; and
9 The Board’s review of the claims on appeal is not an independent analysis
in the first instance. The Examiner should set forth sufficient factual
findings and reasoning supporting claim construction in the first instance, to
permit a meaningful evaluation of the claimed invention vis-à-vis the
applied prior art.
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