Appeal No. 95-4404
Application 07/913,121
from the cDNA-RNA duplex; and the cDNA-RNA duplex is detected through the label
incorporated during synthesis of the cDNA. Foremost among the many differences
between Mizoguchi and the claimed invention is Mizoguchi’s use of a synthetic poly A
template and an oligo dT primer, rather than a synthetic heteropolymeric RNA template
and complementary heteropolymeric primer.
Mogensen is relied upon as evidence that one of ordinary skill in the art would have
found it obvious to substitute a heteropolymeric template and complementary primer for
Mizoguchi’s poly A template and oligo dT primer. Mogensen discloses a method for
detecting specific RNA transcripts based upon sequence-dependent annealing of specific
oligonucleotide primers to intracellular RNA followed by reverse transcriptase catalyzed
chain elongation with labeled nucleotides. The method detects intracellular RNA
transcripts in situ or extracted from cells and so does not involve a synthetic RNA template,
but the oligonucleotide primers are synthetic DNA heteropolymers as they are designed to
be complementary to the intracellular RNA transcripts. Holmes, Urdea and Goff are relied
upon as evidence that one of ordinary skill in the art would have found it obvious to modify
all of the other steps of Mizoguchi in the manner required to arrive at the claimed subject
matter.
We view the examiner’s proposed combination of Mizoguchi and Mogensen as the
dispositive issue here. The examiner believes that one of ordinary skill in the art would
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