Appeal No. 1997-4145
Application No. 08/361,328
IV. Rejection of claims 26-29 under § 103 as obvious over Matsumoto and Lehninger
According to the examiner (answer, p. 6), "Lehninger at page 656 discloses DNA
as being of a form where 0.34 :m per kilobase is its length" and concludes that
it would have been obvious at the time of the instant invention to practice
a DNA form of instant claims 26-29 because Matsumoto et al. discloses
stretched DNA inclusive of various lengths even up to and beyond the
theoretical maximum (that is, beyond breakage), such as given in claims
26-28 ....
However, Lehninger 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 26-28 under § 103 as obvious over
Matsumoto and Lehninger is reversed.
OTHER MATTERS
Appellant and the examiner should review the claims for proper antecedent
basis, typographical errors and any other apparent inconsistencies. For example,
claims 8 and 9, which depend from claim 1, recite "wherein the fixing is with ..." but
claim 1 does not recite a fixing step. Recitation of "about 60 :m", as opposed to about
0.60 :m, in claim 33 may or may not be a typographical error (depending upon if and
where the specification provides support therefore). Claim 40 recites an "extended
DNA" having an interkilobase pair distance of about 0.1 :m. Since the calculated
- 13 -
Page: Previous 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 Next
Last modified: November 3, 2007