Ex parte KOENEMANN - Page 3




          Appeal No. 95-4603                                         Page 3           
          Application 08/101,641                                                      
                                     DISCUSSION                                       
               The combination of Jacobson and Eichelberger would not                 
          have led a person having ordinary skill in the art to the                   
          claimed subject matter.  Jacobson teaches the virtue of                     
          better-quality seeds, but he also teaches generating these                  
          seeds by masking a random source for seed values.  (10:9-38.)               
          This teaching is inimical to the claimed invention, which                   
          identifies useful seeds from an existing sequence.  Assuming,               
          arguendo, that a person having ordinary skill in the art would              
          have combined the references, the combination suggested by the              
          references would not have included seed skipping in the sense               
          taught in the specification and set forth in the claims.                    
          Although we are to read claims broadly during prosecution, our              
          reading must be reasonable in light of the claim as a whole                 
          and in light of the specification.                                          



















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