Appeal No. 95-4404
Application 07/913,121
Mizoguchi and Laquel. The examiner believes 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 in Mizoguchi’s method to avoid
interference from animal polymerase gamma.
We do not agree. As before, we do not consider Mizoguchi to be a general
teaching reference; instead we view Mizoguchi as narrowly focused on substituting a non-
radioactive label for a radioactive one in an otherwise conventional assay for reverse
transcriptase. We agree with appellants that one of ordinary skill in the art would not have
found Laquel’s teachings to provide suffiicient reason, suggestion or motivation to
disassemble Mizoguchi’s assay and reassemble it by replacing the poly A template-oligo
dT primer pair with a heteropolymeric template-primer pair.
Taking a step back, we see no reason, other than hindsight based upon appellants’
disclosure, to modify Mizoguchi’s method to arrive at the claimed invention. The rejections
based upon Mizoguchi in combination with Mogensen, and Mizoguchi in combination with
Laquel are reversed.
Konig
The examiner has rejected claims 14-19 as obvious over Konig in combination with
Urdea and Holmes, and claims 8-13 as obvious over Konig in combination with Urdea,
Holmes and Goff. The publication date of Konig falls between the filing date of the present
-11-
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