Appeal No. 95-4404
Application 07/913,121
teaching reference, especially with respect to the “specific template” as all the templates
disclosed in the reference are poly A templates (varying only by the length of the
homopolymer). While one would recognize from Mogensen that heteropolymeric template
primer pairs could be elongated by reverse transcriptase, we agree with appellants that
this fact alone does not provide the needed reason, suggestion or motivation to
disassemble Mizoguchi and reassemble it using a heteropolymeric template-primer pair
instead of Mizoguchi’s poly A template-oligo dT primer pair.
Laquel is relied upon as an alternative to Mogensen, again to provide evidence that
it would have been obvious to one of ordinary skill in the art to substitute a heteropolymeric
template and complementary primer for Mizoguchi’s poly A template and oligo dT primer.
Laquel discloses the purification and characterization of a wheat embryo DNA
polymerase, comparing its properties with those of animal DNA polymerase gamma and a
reverse transcriptase. Laquel teaches that reverse transcriptase is able to synthesize
cDNA from a synthetic poly A template and from a natural RNA template, but animal
polymerase gamma is unable to use the natural RNA template. Holmes, Urdea and Goff
are relied upon to provide evidence that it would have been obvious to one of ordinary skill
in the art to modify all of the other steps of Mizoguchi in the manner needed to arrive at the
claimed subject matter.
In our view, the dispositive issue here is the examiner’s proposed combination of
-10-
Page: Previous 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 Next
Last modified: November 3, 2007