Appeal No. 2001-1842 Page 5
Application No. 08/684,005
“[a]bsent a disclosure of the sequence of the 200 bp fragment, a person of
ordinary skill in the art would not possess the tools necessary to proceed with
isolating the entire coding sequence.”
In responding to appellants’ arguments, the examiner steps away from her
original ground of rejection, developing a line of reasoning involving the use of
restriction enzymes to isolate an “8 kb ClaI fragment of genomic DNA [which]
would allow one to eliminate the vast majority of Anabaena sp strain 7120
genomic DNA.” Answer, pages 9-10. According to the examiner (Answer, page
10), “one of ordinary skill in the art could easily use several distinct probes each
constructed from a different portion of the disclosed amino acid sequence data
to clearly identify the correct 8 kb ClaI fragment as this fragment should hybridize
to each of the probes and virtually eliminate any likelihood of a false positive.”
The examiner further finds (id.) that “[o]ther alternative methods of isolating the
disclosed 8 kb ClaI fragment could also be devised using techniques well known
to the skilled artisan at the time of the invention [emphasis added].”
While the examiner’s line of reasoning is appealing on the surface, and
may well be theoretically possible, the examiner provides no evidence on this
record supporting her position. As set forth, supra, it is improper for the
examiner to hold claims unpatentable for obviousness based solely on
conclusory statements about what is “common knowledge” or “well known” in the
art, without objective evidence in support of that knowledge. See Lee, 277 F.3d
at 1344, 61 USPQ2d at 1434-1435.
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