Appeal No. 1995-3965
Application No. 07/719,005
hybridization.” Therefore, appellants conclude (Answer, page 17) that “[w]hen
considering the above-described fundamental difference as a whole, it is crucial to
note that Kimmel provides absolutely no suggestion of any technique which would
enable the detection of more than one microorganism using a single
incubation/hybridization.”
In response the examiner argues (Answer, pages 8 and 9) that appellants
admit, “in Paper 16, filed May 10, 1993 ‘that the laboratory procedures required to
carry out the reverse hybridization technique are well known and are fully disclosed
in Wang et al.’” We are not persuaded by this argument. While “laboratory
procedures” (e.g., Southern Blot procedures) may be well known, it is the claimed
invention as a whole that must be considered in an obviousness determination.
See In re Antonie, 559 F.2d 618, 625, 195 USPQ 6, 8 (CCPA 1977). Furthermore,
as set forth in In re Nomiya, 509 F.2d 566, 571, 184 USPQ 607, 612 (CCPA 1975)
“[t]he court must be ever alert not to read obviousness into an invention on the basis
of the applicant’s own statements; that is, we must view the prior art without reading
into that art appellant’s teachings.”
The examiner also argues (Answer, pages 9-10) that “Kimmel explicitly
teaches the same principle as found in this application, namely, that one could mix
probes of different DNA species and use this probe mixture to simultaneously
detect complementary DNA of several different species by hybridizing to multiple
spots … with a single hybridization….” Thus the examiner concludes (Answer,
bridging sentence, pages 10-11), “[t]aken together with the Wang et al. procedure,
6
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007