Appeal No. 95-4404
Application 07/913,121
have found it obvious to combine Mizoguchi and Mogensen, substituting Mogensen’s
specific heteropolymeric primer (along with a complementary synthetic heteropolymeric
template not disclosed by Mogensen) for Mizoguchi’s poly A template and oligo dT primer.
2
The reason, suggestion or motivation to combine the references in this manner according
to the examiner is that “the reaction could have been performed using RT samples
containing both non-specific templates (i.e. poly A mRNA) and specific templates and only
the synthetic heteropolymeric template would be utilized in the reverse transcriptase
reaction . . . provid[ing] the advantage of increasing the specificity of the reverse
transcriptase reaction thereby providing more accurate and reproducible results regarding
the amount of RT present in a sample” (see the Answer, pages 5 and 6); and because
“the ordinary artisan would have recognized that the ‘specific template’ taught by
Mizoguchi is inclusive of both heteropolymeric and homopolymeric templates” (See the
Answer, page 14).
We do not agree. As appellants point out, Mizoguchi is narrowly focused on
substituting biotin-dUTP for a radiolabel in an otherwise conventional assay for reverse
transcriptase. (See the Brief, pages 10 and 11). We do not view Mizoguchi as a general
2 As stated in Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568,
1573, 37 USPQ2d 1626, 1629 (Fed. Cir. 1996) (citation omitted), “It is well-established
that before a conclusion of obviousness may be made based on a combination of
references, there must have been a reason, suggestion, or motivation to lead an inventor
to combine those references.”
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