Appeal No. 1997-0160
Application No. 08/073,985
BACKGROUND
According to appellants,
[i]n the presently claimed invention, bacterial RNA is hybridized with a primer
which is complementary to a genus specific region of RNA of a particular
bacteria. The 3' end of this primer is not complementary to the RNA of
bacteria from another genus. If bacteria of the genus to be detected are
present in the sample, the hybridized primer is elongated in the presence of
a suitable polymerase and deoxyribonucleotides. Any elongation product
which is formed is then hybridized with a labeled oligonucleotide which is
specific for a particular species within the detected genus. The hybridization
product is then detected by means of the labeled oligonucleotide. [Brief, p.
5.]
OPINION
As set forth in In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1442
(Fed. Cir. 1991),
[w]here claimed subject matter has been rejected as obvious in view of a
combination of prior art references, a proper analysis under § 103 requires,
inter alia, consideration of two factors: (1) whether the prior art would have
suggested to those of ordinary skill in the art that they should make the
claimed composition or device, or carry out the claimed process; and (2)
whether the prior art would also have revealed that in so making or carry out,
those of ordinary skill would have a reasonable expectation of success. See
In re Dow Chemical Co., 837 F.2d 469, 473, 4 USPQ2d 1529, 1531 (Fed.
Cir. 1988). Both the suggestion and the reasonable expectation of success
must be founded in the prior art, not in the applicant's disclosure. Id.
Mullis, Hogan and Frohman are applied as prior art against the claimed invention.
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