Appeal No. 1995-2839
Application 08/062,023
relies on Mullis I for teaching (i) a method of performing PCR amplification in an aqueous
buffer at pH between 7 and 9, and (ii) performing 27 cycles of PCR amplification. Id. The
examiner relies on Mullis II for disclosing the conditions for optimizing primer length in a
PCR amplification reaction. The examiner states that it is her position that “the T range
m
would be dependent upon the G:C content of the oligonucleotides [primers] and it would
have been obvious to design reaction temperatures within the claimed temperature range.”
Id. The examiner concludes that
It would have been prima facie obvious to one of ordinary skill
in the art at the time the invention was made to detect target nucleic
acids by the use of coamplification of target nucleic acid sequences
as taught by Vandenvelde et al., combined with primer lengths and Tm
ranges as disclosed by Mullis et al. (1987) [Mullis II] and Mullis et al.
(1986) [Mullis 1] to achieve methods for the simultaneous
amplification and detection of a target DNA as a whole. (Answer, p.
7)
It cannot be gainsaid that the examiner has the initial burden under § 103 to
establish a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445,
24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Piasecki, 745 F.2d 1468, 1471-72,
223 USPQ 785, 787-88 (Fed. Cir. 1984). To that end, the examiner must show that some
objective teaching or suggestion in the applied prior art, or knowledge generally available
in the art, would have led those of ordinary skill to combine the teachings of the references
to arrive at the claimed invention. Pro-Mold and Tool Co. v. Great Lakes Plastics, Inc.,
75 F.3d 1568, 1573, 37 USPQ2d 1626, 1629 (Fed. Cir. 1996);
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