Appeal No. 1997-0160
Application No. 08/073,985
Hogan describes preparing genus and species-specific hybridization probes for
detection and/or quantitation of bacteria by comparing one or more sequenced rRNA
variable regions from a target bacteria to one or more rRNA variable region sequences
from closely related bacteria to select a sequence unique to the rRNA of the target
bacteria (p. 9, l. 29 - p. 10, l. 2; p. 30, ll. 4-15).
Frohman describes production of full-length cDNA clones of low abundance
mRNAs by using the DNA polymerase chain reaction to obtain copies of the region
between a single point in the transcript and the 3' or 5' end.
According to the examiner,
it would have been obvious ... to have used primers which amplified just such
variable regions as identified by Hogan ..., and to have performed
subsequent hybridization reactions as taught by Mullis ..., where specific
probes are used. Just such probes are suggested by Mullis ..., and taught
explicitly by Hogan ..., and Frohman ... . While the prior art does not explicitly
state that the primers used were lacked 3' complementarity to non-target
nucleic acid sequences, ... such a limitation does not render the claimed
invention non-obvious but rather, is considered an obvious design
component to primer design (answer, para. bridging pp. 9-10).
We have no doubt that the prior art could be modified in the manner proposed by
the examiner, however the fact that the prior art could be so modified would not have made
the modification obvious unless the prior art suggested the desirability of the modification.
In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). Here, we
agree with appellants that the examiner has not established a prima facie case of
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