Appeal No. 1995-3965
Application No. 07/719,005
using reverse probes to identify a single organism, these references suggest
identifying a plurality of microorganisms using a plurality of probes.”
Appellants, however, outline (Reply Brief, pages 5-6) three “differences
between the differential scanning technique of the Kimmel review and the process
of the present invention….” First, the “dots” of Kimmel’s method “are prepared for
[sic] the single cDNA, clones or mixture of cDNA clones, and thus represents [sic]
only a small portion … of the genomic DNA of a[n] eukaryotic organism…. In direct
contrast [to Kimmel’s method] the dots of different selected standards of the present
invention are prepared from genomic DNA….” Second, in Kimmel’s method “[t]he
reverse probe … is the mRNA of a given eukaryotic organism or the mRNA of a
given cell type of a given eukaryotic organism… In direct contrast, the reverse
probe of the present invention is prepared from … all genomic DNA in the
sample….” Finally, appellants’ argue (Reply Brief, page 6) “the present invention
teaches a convenient process for the quick, convenient, initial characterization of
different microorganisms in a complex microbial community using a single
hybridization. The Kimmel review makes absolutely no such a [sic] teaching.”
To this, the examiner finds (Supplemental Answer, page 1) “[t]hese
arguments are not persuasive for the reasons of record.” We cannot agree. The
initial burden of presenting a prima facie case of obviousness rests on the
examiner. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). On this record, appellants identify three differences between the claimed
invention and the prior art relied upon. These differences highlight Kimmel’s failure
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