Appeal No. 1995-2839
Application 08/062,023
In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1784 (Fed. Cir. 1992).
In the case before us, it does not appear that the examiner has fully appreciated the
teachings of the Vandenvelde reference with respect to either the PCR reaction conditions
or the desirable properties of the primers. As to the reaction conditions, the examiner’s
reliance on Mullis I is superfluous. That is, the examiner points to Mullis I for disclosing the
number of amplification cycles and pH ranges of the reaction buffer required by the claims,
when both these limitations are disclosed by Vandenvelde. As to the T ranges of the
m
primers, this, too, is discussed by Vandenvelde, but we find that the examiner presents
inconsistent arguments in this regard. That is, on the one hand, the examiner argues that
the T range is dependent on the G:C content and is a result effective variable and, on the
m
other, that the claimed range is disclosed by Mullis II. The examiner has not cited to any
specific section of the reference to support this statement, and none is readily apparent to
us.
Neither in his reasons for obviousness, nor in his response to the appellants’
arguments, does the examiner rely on what appear to be the most relevant teachings of
record. Vandenvelde discloses that
The results of the control experiments involving about [a] hundred
PCR-products enable us to say that our FM-PCR protocol has a
specificity of 100% even without any final detection assay (data not
shown). But this can only be true if the extension primers are correctly
chosen. A good amplification primer should form stable duplexes
with the target sequence under the annealing conditions, be highly
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