Appeal No. 94-2742
Application 07/792,600
Claim 1 stands rejected under 35 U.S.C. § 102(b) as anticipated by Wong. Claims
1 through 8 stand rejected under 35 U.S.C. § 103 as unpatentable over Wong in view of
Smith. We affirm the anticipation rejection and reverse the obviousness rejection. In
addition, we make new grounds of rejection under 37 CFR § 1.196(b).
ANTICIPATION REJECTION
Claim 1 is directed to a purified and isolated nucleic acid sequence which encodes
a human polymerase " catalytic polypeptide. The examiner points to the results at a
Northern blot analysis of human messenger RNA (mRNA) set forth in Figure 4 at page 41
of Wong. That hybridization yielded a single 5.8 kb band which Wong states is sufficient to
encode a polypeptide of 165-180 kd. The examiner has concluded that the 5.8 kb mRNA
is a native human mRNA encoding human polymerase " catalytic polypeptide.
In responding to this rejection in the Reply Brief (Paper No. 26, February 22, 1995),
appellants argue at page 2 that “[i]t is not clear that the 5.8 kb fragment actually encodes
the protein” and that the Northern blot procedure used by Wong did not result in the
“isolation” of the 5.8 kb mRNA. Finally, appellants argue in the sentence bridging pages 2-
3 of the Reply Brief that Wong did not “sequence” the 5.8 kb mRNA.
In our view, the description in Wong of the 5.8 kb mRNA identified in the Northern
blot analysis of Figure 4 is sufficient to shift the burden to appellants to establish that that
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