Appeal No. 94-0120
Application 07/208,512
procedures employing primer extension such as the PCR of Mullis et al. and
said one of ordinary skill would have been motivated to use the Van de
Sande et al. -type linker and ligate both strands by the obvious facility of
providing the required priming sequences for PCR without the requirement
for knowing the sequences flanking the template region.
The examiner also stated at page 6 of the examiner’s answer in response to an
argument that:
[T]he skilled artisan using the PCR regularly in the laboratory would have
been thoroughly familiar with the technique and this would have immediately
recognized splinkers as a means for adding a known sequence onto a DNA
fragment to be amplified by using the added-on sequence as a priming
sequence from which to derive a primer.
If the examiner is rejecting claim 12 on the basis of a proposed modification of
Mullis based upon the disclosure of Van de Sande only, i.e., Maniatis is not needed to
reject claim 12, the examiner has not articulated a coherent fact-based rationale for such a
rejection. It has long been held that a conclusion of obviousness must be based upon
facts, not generalities. In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA
1967), cert. denied, 389 U.S. 1057 (1968); In re Freed, 425 F.2d 785, 788, 165 USPQ
570, 571 (CCPA 1970). Here, we have only the vaguest intimations from the examiner as
to why claim 12 is unpatentable. The lack of a specific, fact-based statement of a rejection
of the broadest claim pending in an application under appeal frustrates the purposes of the
administrative appeal procedure within the Patent and Trademark Office. By statute, this
board functions as a board of review. 35 U.S.C.
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