Appeal No. 1996-2442
Application 08/062,021
modified would not have made the modification obvious unless the prior art suggested
the desirability of the modification. In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125,
1127 (Fed. Cir. 1984). Here we find no reason stemming from the prior art which would
have led a person having ordinary skill to the claimed invention. In our judgment, the
only reason or suggestion to combine the references in the manner proposed by the
examiner comes from appellants’ specification.
On this record, we are constrained to reverse Rejections I and II.
Rejection III
Claim 38, directed to an oligonucleotide primer of defined sequence, stands
rejected under 35 U.S.C. § 103 as unpatentable over Brytting and Gibbs. Both
references are discussed above.
Again, the examiner has made no attempt to address the requirement for a
primer with a specific sequence, concluding simply that “[i]t would have been prima
facie obvious to one of ordinary skill in the art at the time the instant invention was
made to arrive at the oligonucleotides directed against hCMV. [Brytting] provides the
motivation for making primers directed against hCMV, . . . [Gibbs] provides the teaching
and rationale to design primers which are conformed to the narrow range of melting
temperature.” Examiner’s Answer, page 11.
Again, we find no reason stemming from the prior art which would have led a
person having ordinary skill to the specific primers claimed. Even if the examiner had
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