Appeal No. 2001-0499 Page 5
Application No. 08/945,731
Another example appears in the paragraph bridging pages 4-5 of Paper No. 10 as
follows:
A further reading of Itoh et al. at page 47, lines 6-24 reveals a teaching of
the general mechanism of action of the polymer. Stating that high molecular
weight substances are retained at low temperatures and released at high
temperatures. While Itoh et al. did not contemplate nucleic acids to be treated in
this manner, it is clear that an understanding of the general mechanism of action
of the polymer is sufficient to teach one of skill in the art how to use the polymer.
It is clear from reading Itoh that it is relevant in determining the patentability of
claim 3 on appeal. However, in critical passages, Itoh contradicts or is opposite that
which is required by claim 3 on appeal. For example, claim 3 requires that the nucleic
material be absorbed at a lower temperature and be released at a higher temperature.
In the one mention of nucleic acids in Itoh, the reference states that “these compounds
may be held at high temperatures and released at low temperatures.” Itoh, page 44,
line 13- page 45, line 13. However, as observed by examiner and appellants, Itoh goes
on to state at page 47, lines 19-24 that:
Where materials, which are to be released, are held in gel-like polymers,
they are held at low temperatures as the gel-like polymers are swollen at the low
temperatures and are released at high temperatures as the gel-like polymers are
shrunk at the high temperatures.
It may be that a person of ordinary skill in this art reading Itoh in its entirety would
reasonably conclude that regardless of the other teachings in the document, when gel-
like polymers are used according to that invention, they absorb at a low temperature
and release at a high temperature similar to the polymer sol required by claim 3 on
appeal. If so, then one of ordinary skill in the art would understand that the specific
teaching in regard to absorption and release of nucleic acids at page 45 of the
document, which is opposite that required by claim 3 on appeal would apply only when
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