Appeal No. 1997-4145
Application No. 08/361,328
procedures" (p. 504). Thus, breakage is not necessarily due to stretching beyond a
maximum length. The mere possibility that the method of Matsumoto may produce a
super-extended DNA having an interkilobase pair distance that exceeds 0.34 :m does
not legally suffice to show anticipation. In re Oelrich, 666 F.2d 578, 581, 212 USPQ
323, 326 (CCPA 1981). Occasional results are not inherent. Thus, without an inherent
teaching about interkilobase pair distances in thin, straight filaments, Matsumoto does
not anticipate the claimed invention. Accordingly, the rejection of claims 1, 2, 4, 5 and
10 under § 102 as clearly anticipated by Matsumoto is reversed.
III. Rejection of claims 1-5 and 10 under § 103 as obvious over Matsumoto and Kanda
The examiner relies on Kanda to "disclose detergent usage as well as the
functional equivalent of mechanical cell disruption [used in Matsumoto] to release DNA"
(answer, p. 5). According to the examiner,
it would have been obvious to someone of ordinary skill in art at the time
of the instant invention to prepare DNA for in situ hybridization analysis
utilizing either the Matsumoto et al. guidance or a functional equivalent
that is reasonably expected to perform as well as given by Kanda et al.
thus resulting in the hereinunder rejected embodiments (answer, p. 5).
However, Kanda fails to remedy the deficiencies of Matsumoto, in particular by failing to
disclose or suggest stretched DNA molecules having an interkilobase pair distance that
exceeds 0.34 :m as required by the claimed invention for the reasons discussed
above. Therefore, the rejection of claims 1-5 and 10 under § 103 as obvious over
Matsumoto and Kanda is reversed.
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