Appeal No. 2003-1792
Application No. 09/434,598
35 U.S.C. §102(b) and §103(a)
Claims 34, 35 and 37 stand rejected under 35 U.S.C. §102(b), as anticipated by
George. Claims 36 stands rejected under 35 U.S.C. §103(a), as obvious over George
in view of Milligan.
“A claim is anticipated only if each and every element as set forth in the claim is
found, either expressly or inherently described, in a single prior art reference.”
Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed.
Cir. 1987).
It is the examiner’s position that George (Answer, page 4):
disclose 80 EGS [external guide sequences] (a set) that have been
screened by methods disclosed in the reference. In Example 6
...[George] disclose that from the screening it was determined two distinct
regions that represented accessible target regions. Twelve (a set) of the
EGSs were then chemically modified and tested further.
We find no error in the examiner’s determination that George anticipates the
claimed invention within the meaning of 35 U.S.C. 102(b).
Appellants argue that George (Brief, page 10):
differs from the claimed set of oligomers in two features:
1) not all of the EGS of Shaji [George] are functional, in contrast to the
claimed set, which by virtue of the method of manufacture and selection,
must all be functional; and
(2) not all of the EGSs of Shaji [George] are “targeted to all or a
substantial number of the accessible sites in the RNA molecule of
interest.”
The examiner counters the appellants’ position, arguing (Answer, page 6)
It is clear that at least the 12 EGS of Shaji et al represent a set of
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