Appeal No. 1999-1266
Application No. 08/859,472
dramatically different than that of Link and an ordinary practitioner, faced with
the choice of which Abramson teaching would be useful in the method of Link
in view of Parkhurst or Heller, in which detection proceeds by FRET and not by
digestion of labeled oligonucleotides, would choose the teaching that
eliminated the 5' to 3' exonuclease . . . since this would not enhance the
detection, unlike the second teaching which would abolish detection.
To the extent that the process of Abramson may differ from the claimed process in the use of
labeled oligonucleotides versus FRET, it remains that the explicit teaching of Abramson would
direct one of ordinary skill away from the use of an polymerase with attenuated or reduced 5'
to 3' exonuclease activity as presently claimed. Further, the examiner points to no facts or
evidence, in the prior art, which would reasonably establish that one of ordinary skill in this art,
with no knowledge of the presently claimed invention, would appreciate the significance of this
difference and then select a different enzyme based on this difference. The examiner has
pointed to no facts to be found in Link, Parkhurst or Heller which would reasonably be read to
have directed one of ordinary skill in the use of a particular enzyme from those disclosed by
Abramson.
In order to establish a prima facie case of obviousness on the facts before us, the
examiner must have provided evidence which would have led one of ordinary skill in this art,
at the time of the invention, to use a polymerase enzyme substantially lacking any
5'->3' exonuclease activity in a combined PCR amplification and hybridization process as
presently claimed. On this record, the examiner has not provided facts or substantive
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