Appeal 2007-1627
Application 09/870,009
“embedded” in the other, without human intervention. In addition, all DNA
sequences inherently have subsequences “embedded” in them, in the sense
that each subsequence is surrounded by (embedded in) the larger sequence
of the entire DNA molecule.
We find that claim 5 reads on naturally occurring DNA and therefore
encompasses nonstatutory subject matter. The rejection of claim 5 under 35
U.S.C. § 101 is affirmed. Claims 8-12, 15, 17-27, and 30-34 fall with claim 5.
5. ANTICIPATION
Claims 5, 8-12, 15, 17-27, and 30-34 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Lizardi.2 Claims 5, 8-11, 15, 17-27, 30, and 34
stand rejected under 35 U.S.C. § 102(b) as anticipated by Arnot.3 Since the
Examiner relies on similar reasoning with respect to both rejections, we will
consider them together.
The Examiner points to Lizardi’s description of detecting mutations in
the Huntington’s chorea gene using an open-circle probe, and reasons that
when the open-circle probe hybridizes to the genomic Huntington’s chorea
gene, the resulting complex meets all the limitations of claim 5:
Figure 1 shows a open circle probe hybridized to a target
sequence, and Figure 5 shows an open circle probe with
detection tags which represents a first gene portion including a
predetermined gene for Huntington’s chorea, a second portion
which is other than said gene portion (=probe), and a not
naturally occurring nucleotide sequence (=detection tag) which
2 Lizardi, US 5,854,033, issued Dec. 29, 1998.
3 Arnot et al., “Digital codes from hypervariable tandemly repeated DNA
sequences in the Plasmodium falciparum circumsporozoite gene can
genetically barcode isolates,” Molecular and Biochemical Parasitology, Vol.
61, pp. 15-24 (1993).
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