Appln. No.: 11/388,723
`Attorney Docket No. 30696-712201
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`REMARKS
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`Claims 1-20 are pending. Claims 1—20 stand rejected. Reconsideration is respectfully
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`requested in light of the following remarks.
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`Claims 12-20 are withdrawn.
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`Claim 21 is new. Exemplary support for new claim 21 can be found in the specification as
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`filed, e. g., at paragraph 0057.
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`Claims 1, 2, 6 and 8 have been amended. The amendments are supported by the original
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`claim language and the specification as originally filed. No new matter is introduced by this
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`response, and thus entry thereof is respectfully requested.
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`1.
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`Claims Rejection Under 35 U.S.C. §102
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`Claims 1-11 are rejected under 35 U.S.C. §102(b) as allegedly being anticipated by Parce et
`al., (US. Patent No. 75,942,443 “Parce” hereinafter). Applicants respectfully traverse.
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`A patent claim is anticipated if a single prior art reference expressly or inherently discloses
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`each and every claim element. A close examination of the cited reference reveals that this standard
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`is not met.
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`The Action states that “[a]pparatus claims must be structurally distinguishable from the prior
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`art in terms of structure, not function.” As an initial matter, Applicants respectfully note that the
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`independent claim 1 recites a device that is not only functionally but also structurally distinct from
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`the cited device of Parce. For purposes of clarity, claim 1 is amended to recite “wherein at least one
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`channel located between said plurality of reaction sites comprises an optical barrier effective in
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`reducing the amount of optical cross-talk between said plurality of said reaction sites.” This and/or
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`other features required by claim 1 is missing in Parce.
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`The Examiner pointed to Figures 3, 4A-4F and column 16, lines 1-65 of Parce as, allegedly,
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`depicting an anticipatory device. However, a closer examination reveals that the Figures and
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`description relied upon by the Examiner do not show a channel comprising an optical barrier.
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`Rather, Figures 3 and 4A-4F of Parce illustrate a “planar substrate 302”, fabricated therein a series of
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`3330041_1.DOC
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`Atty, Docket No. 30696-712201
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`-5-
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`Appln. No.: 11/388,723
`Attorney Docket No. 30696-712201
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`parallel reaction channels 312—324 that are connected with a single transparent channel 306. None of
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`these structures comprise an optical barrier. Moreover, “particle retaining matrices 344” and “bead
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`resting wells 326—338” also do not meet this element.
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`Even if one were to assume that matrices 344 and bead resting wells 326-338 represent
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`reaction sites, no optical barrier effective in reducing the amount of optical cross-talk between
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`particle retaining matrices 344 and/or bead resting wells 326-338 is shown or disclosed. Nor is a
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`need for such an optical barrier discussed in the reference or apparent in the design. Instead of a
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`channel comprising an optical barrier, the figures in Parce show a seeding channel 306 that runs
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`between particle retaining matrices 344 and bead resting wells 326-338 and that is transversely
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`disposed in relation to the reaction channels 312-324. The seeding channel 306 would not impede
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`light or optical cross-talk and in no way represents or can be extrapolated to be an optical barrier
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`between a plurality of reaction sites (i.e. between particle retaining matrices 344 and/or bead resting
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`wells 326-338).
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`It follows that Parce fails to disclose an apparatus in which at least one channel located
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`between a plurality of reaction sites comprises an optical barrier, which is effective in reducing the
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`amount of optical cross-talk between said plurality of said reaction sites.
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`Because claim 1 is novel in view of Parce, so are the dependent claims (2-21) that recite
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`additional structural or functional features. Accordingly, Applicants respectfully request withdrawal of
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`this rejection.
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`3330041_1.DOC
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`Atty. Docket No. 30696-712201
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`Appln. No.: 11/388,723
`Attorney Docket No. 30696-712201
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`CONCLUSION
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`Applicants submits that this paper fully addresses the issues raised in the Office Action
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`mailed on March 21, 2008. Should the Examiner have any questions, the Examiner is encouraged to
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`contact the undersigned attorney at (650) 849—33 83. The Commissioner is authorized to charge any
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`additional fees which may be required, including petition fees and extension of time fees, to Deposit
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`Account No. 23—2415 (Docket No. 30696—712201).
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`Respectfully submitted,
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`WILSON SONSINI GOODRICH & ROSATI
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`By:
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`Steve Bacsi, Ph.D.
`Reg. No. 50,736
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`Karen K. Wong, Ph.D.
`Reg. No. 44,409
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`Dated: July 21, 2008
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`650 Page Mill Road
`Palo Alto, CA 94304-1050
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`(650) 493-9300
`Customer No. 021971
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`3330041__1.DOC
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`Atty. Docket No. 30696-712201
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