Appeal No. 1997-3461
Application No. 07/806,932
(Fed. Cir. 1992). Once the examiner’s speculation regarding the differences between
nm23-H1 and nm23H2S is removed, it is clear that the examiner’s treatment of the
claims on appeal lacks a reason, suggestion or motivation, stemming from the prior art,
which would have led a person having ordinary skill to the claimed isolated
polynucleotide molecules having the sequences SEQ ID NO:2 and SEQ ID NO:4. Pro-
Mold & Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626,
1629 (Fed. Cir. 1996). In our judgment, the only reason or suggestion to modify the
references to arrive at the present invention comes from appellants’ specification.
Accordingly, we reverse the rejection of claims 22, 23, 25 and 26 under 35
U.S.C. ' 103.
The obviousness-type double patenting rejections are based on the same
reasoning as the rejection of claims 22, 23, 25 and 26 under 35 U.S.C. ' 103.
Accordingly, we reverse the rejection of claims 22, 23, 25 and 26 under obviousness-
type double patenting over claims 1-4 of Steeg I, or Steeg II, in view of Mullis.
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