Appeal No. 2006-0258 Page 16
Application No. 09/755,747
then a high resolution melting curve from 30 to 70ºC would require 40 min; i.e.,
measurement is rate limiting.”
In addition, Stimpson teach (id.), “[r]emoval of background signal would
require some sort of washing system to eliminate the label as it dissociates from
the capture site.” The examiner has does not appear to have appreciated this
teaching in Stimpson which further leads away from appellant’s requirement for a
steady and progressive adjustment of temperature while continually measuring
output signal. As we understand it, it would be hard to meet the requirements of
appellant’s claimed invention if the one has to stop and wash the array after each
incremental increase in temperature.
Therefore, despite the accolades that the examiner gives to the SYBR dye
taught by Wittwer, it is a fluorescent dye. As such it would appear to suffer from
the same problems that Stimpson teaches as applying to fluorescent dyes.
There is no evidence on this record that the use of fluorescent dyes including
SYBR would not suffer the same problems that Stimpson teach as applying to
fluorescent dyes in a solid state environment. Accordingly, it is our opinion that
the examiner has not provided the evidence necessary to establish a prima facie
case of obviousness.
As set forth in In re Kotzab, 217 F.3d 1365, 1369-70, 55 USPQ2d 1313,
1316 (Fed. Cir. 2000):
A critical step in analyzing the patentability of claims pursuant to
section 103(a) is casting the mind back to the time of invention, to
consider the thinking of one of ordinary skill in the art, guided only
by the prior art references and the then-accepted wisdom in the
field. . . . Close adherence to this methodology is especially
important in cases where the very ease with which the invention
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