Appeal No. 1997-0160
Application No. 08/073,985
obviousness because the prior art does not disclose or suggest "the use of a genus-
specific elongation reaction followed by a species-specific hybridization reaction" (brief, p.
10, ll. 4-5). In our judgment, the only reason or suggestion to combine the references in the
manner proposed by the examiner comes from appellants' specification. Thus, we find the
examiner has not carried his burden of establishing a prima facie case of obviousness
and has relied on impermissible hindsight in making his determination of obviousness. In
re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1784 (Fed. Cir. 1992) (“It is
impermissible to engage in hindsight reconstruction of the claimed invention, using the
applicant’s structure as a template and selecting elements from references to fill the
gaps.).
Accordingly, the rejection of claims 2 and 4-24 under 35 U.S.C. § 103 as being
unpatentable over Mullis in view of Hogan and Frohman is reversed.
OTHER MATTERS
Appellants indicated in the brief (pp. 2-3) that it was their belief that all the
amendments made after the final rejection (Paper No. 37, mailed July 21, 1995) had been
entered upon the filing of the brief. However, the examiner stated that the proposed
amendment to claims 4, 15 and 24 filed October 23, 1995 (Paper No. 39) would not be
entered in the advisory action mailed November 9, 1995 (Paper No. 40). The examiner
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