Appeal No. 95-3606
Application 07/827,691
in or expectation from the prior art that the claimed . .
.
composition will have the same or a similar utility as
one
newly discovered by applicant. . . . In particular, the
statement that a prima facie obviousness rejection is not
supported if no reference shows or suggests the newly
discovered properties and results of a claimed . . .
[composition] is not the law.
. . . The art provided the motivation to make the
claimed compositions in the expectation that they would
have similar properties.
Having determined that the subject matter of Claims 42
and 29-33 would have been prima facie obvious to a person
having ordinary skill in the art for sequencing of DNA with
high GC content in view of the combined teachings of Kremer,
Innis I, and Innis II, the burden to present evidence to the4
contrary shifted to appellants. In re Piasecki, 745 F.2d at
1472, 223 USPQ at 788. However, the evidence appellants
have submitted in rebuttal emphasizes the kit’s unexpected
utility in methods for reliably “ascertaining whether an
individual is a carrier for, or afflicted with Fragile X”
(Claim 41). We restate our holding that the kit appellants
claim is not limited for use in the method of Claim 41. See
4 The examiner cited Kremer, Fig. 3, p. 1713, for its
description to include labeled probes for Southern blot analysis
of molecular size in addition to sequence analysis (Sec. Suppl.
Ans., p. 3, first full para.).
- 26 -
Page: Previous 19 20 21 22 23 24 25 26 27 28 29 30 31 32 33 Next
Last modified: November 3, 2007