Appeal No. 94-0120 Application 07/208,512 procedures employing primer extension such as the PCR of Mullis et al. and said one of ordinary skill would have been motivated to use the Van de Sande et al. -type linker and ligate both strands by the obvious facility of providing the required priming sequences for PCR without the requirement for knowing the sequences flanking the template region. The examiner also stated at page 6 of the examiner’s answer in response to an argument that: [T]he skilled artisan using the PCR regularly in the laboratory would have been thoroughly familiar with the technique and this would have immediately recognized splinkers as a means for adding a known sequence onto a DNA fragment to be amplified by using the added-on sequence as a priming sequence from which to derive a primer. If the examiner is rejecting claim 12 on the basis of a proposed modification of Mullis based upon the disclosure of Van de Sande only, i.e., Maniatis is not needed to reject claim 12, the examiner has not articulated a coherent fact-based rationale for such a rejection. It has long been held that a conclusion of obviousness must be based upon facts, not generalities. In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967), cert. denied, 389 U.S. 1057 (1968); In re Freed, 425 F.2d 785, 788, 165 USPQ 570, 571 (CCPA 1970). Here, we have only the vaguest intimations from the examiner as to why claim 12 is unpatentable. The lack of a specific, fact-based statement of a rejection of the broadest claim pending in an application under appeal frustrates the purposes of the administrative appeal procedure within the Patent and Trademark Office. By statute, this board functions as a board of review. 35 U.S.C. 5Page: Previous 1 2 3 4 5 6 7 NextLast modified: November 3, 2007