Appeal No. 95-3606
Application 07/827,691
II do not establish a prima facie case of unpatentability of
Claim 41 under 35 U.S.C.
§ 103. It should suffice for this panel to merely point out
that the examiner conceded during the course of his appearance
at Oral Hearing on May 3, 1999 that c dGTP is expensive in7
comparison to dGTP and did not deny and has not denied that
appellants’ arguments that Fu et al. (Fu), “Variation of the
CGG Repeat at the Fragile X Site Results in Genetic
Instability: Resolution of the Sherman Paradox,” Cell, Vol.
67, pp. 1047-1058 (December 20, 1991), and other extrinsic
evidence of record, support a finding that Kremer, Innis I,
and Innis II would not have led persons having ordinary skill
in the art to carry out the process appellants claim with a
reasonable likelihood of successfully performing the
substantial and practical function it was designed to perform.
Kit claims 42 and 29-33 stand on a completely different
footing. We hold that, unlike method Claim 41, the kit
appellants claim merely comprises (Claim 42; emphasis added):
a) “at least one oligonucleotide primer capable of
hybridizing to nucleic acid sequences present within or
sufficiently near the FMR-1 GC-rich fragile site . . .”;
b) “7-deaza GTP” (i.e., 7-deaza GTP or 7-deaza dGTP); and
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