Appeal No. 95-3606
Application 07/827,691
contrast, the c dGTP-containing DNA (a 3:1 mix with dGTP)7
was cleaved only 10 to 20% by EcoRI . . . and PstI . . .
and about 50% by HindIII . . . .
3. Prima facie obviousness under 35 U.S.C. § 103
The examiner has the initial burden to establish a prima
facie case of obviousness under 35 U.S.C. § 103. In re Fine,
837 F.2d 1071, 1074, 5 USPQ 1596, 1598 (Fed. Cir. 1988); In re
Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir.
1984). The prior art references used to support prima facie
obviousness must be read for everything they fairly would have
taught a person having ordinary skill in the art. In re
Burckel, 592 F.2d 1175, 1179, 201 USPQ 67, 70 (CCPA 1979); In
re Lamberti, 545 F.2d 747, 750, 192 USPQ 278, 280 (CCPA 1976).
In that light, we revisit the references upon which the
examiner relies. It is instructive first to study the
Background of the Invention Innis I describes. Most
especially, Innis I teaches (Innis II, col. 2, l. 51-65):
Scientists working in areas not involving the
polymerase chain reaction have observed that certain
nucleic acid sequences can form stable secondary
structures, such as palindromic hairpin loops or
compressed regions. Because the presence of such
structures can lead to anomalous migration patterns
during gel electrophoresis, i.e., as in DNA sequencing,
researchers attempted to find means for preventing the
formation of secondary structures in nucleic acids.
- 16 -
Page: Previous 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 Next
Last modified: November 3, 2007