Appeal No. 94-0120
Application 07/208,512
See page 3, second full paragraph of the examiner’s answer. Claim 1 appears to require
method steps that are described by Maniatis. Claim 12 does not.
As so often happens when the examiner fails to address the broadest claim
pending in the application but, rather, focuses on a narrower claim, the reasons why the
broader claim is unpatentable may be lost. If we were to make an informed guess as to
what the examiner’s position is regarding the patentability of claim 12, it would be as
follows. Claim 12 requires a series of steps which are known to one of ordinary skill in the
art as PCR as described in Mullis. However, the method required by claim 12 differs from
that described in Mullis in at least two significant aspects, i.e., claim 12 requires the use of
a double-strand linker and a primer whose sequence is complementary to a region of that
linker. The examiner has pointed to the paragraph bridging columns 16-17 of Mullis as
evidence that the reference encompasses the use of a “linker.” Mullis does, in fact,
describe the use of a linker in that passage. However, that passage does not describe the
use of a double-strand linker or the use of a primer which is complementary to a region of
the linker. According to the examiner (examiner’s answer, pages 2-3), Van de Sande
describes the use of a double-strand linker called a splinker.
While the examiner has not separately addressed claim 12, she concluded at page
4 of the examiner’s answer that:
[O]ne of ordinary skill in the art would have recognized the application of the
added-on priming sequence of Van de Sande et al. to amplification
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