Ex parte PERGOLIZZI et al. - Page 4




          Appeal No. 95-3606                                                          
          Application 07/827,691                                                      
                         a)   at least one oligonucleotide primer capable             
                    of hybridizing to nucleic acid sequences from an                  
                    individual, wherein said sequences are selected from              
                    the group of sequences that consists of (I)                       
          sequences                                                                   
                    that are present within the FMR-1 fragile site, and               
                    (ii) sequences that are sufficiently near the FMR-1               
                    GC-rich fragile site to yield a PCR product;                      
                         b)   nucleotide analogue selected from the group             
                    consisting of 7-deaza GTP, inosine, and 7-deaza                   
                    inosine; and                                                      
                         c)   a PCR reaction mixture which is                         
          substantially                                                               
                    free of added GTP or dGTP.                                        




                                     Discussion                                       
          1.   Claim interpretation                                                   
               Preliminarily, we note the following statement in the                  
          examiner’s Second Supplemental Examiner’s Answer (Sec. Suppl.               
          Ans.), mailed August 23, 1995, page 3, second full paragraph,               
          which reads:                                                                
                    While Kremer does not explicitly teach combining                  
               the materials of the method together in a kit, it would                
               have been prima facie obvious to one of ordinary skill                 
               in the art at the time the invention was made to package               
               the materials together in the manner convenient for use                
               to one of ordinary skill in the art.                                   
          In so stating, the examiner apparently concludes that the                   
          materials employed to perform the methods of Claims 41, 10,                 
                                          - 4 -                                       





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