Appeal No. 95-3606
Application 07/827,691
Barr et al., 1986, Bio Techniques 4(5):528-532, reported
that use of 7-deaza-2'-deoxyguanosine-5'-triphosphate
(c dGTP) in dideoxy-sequencing reaction mixtures helped7
to resolve abnormal and compressed regions in the
sequencing gels.
From the above-quoted background described by Innis I,
and the Innis I disclosure as a whole, we find that persons
having ordinary skill in the art at the time this application
was filed would have understood that dideoxy-sequencing
processes do not necessarily involve the polymerase chain
reaction and would have considered the use of c dGTP in7
dideoxy-sequencing to help resolve abnormal and compressed
regions in the sequencing gels to be patentably distinct from
the use of c dGTP in polymerase chain reaction mixtures for7
structure-independent DNA amplification. Accordingly, we hold
that the examiner erred in liberally extracting bits and
pieces from the description of
each of the distinct processes described in Kremer with the
hindsight purpose of reconstructing the process appellants
claim. “It is impermissible . . . simply to engage in a
hindsight reconstruction of the claimed invention, using the
applicant’s structure as a template and selecting elements
from references to fill the gaps.” In re Gorman, 933 F.2d
982, 987, 18 USPQ2d 1885, 1888 (Fed. Cir. 1991). That the
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