Appeal No. 1995-3965
Application No. 07/719,005
to suggest screening a genomic DNA blot with genomic DNA probes. In contrast,
the claimed invention requires that a genomic DNA dot blot be probed with genomic
DNA. As set forth in Antonie “[j]ust as we look to a chemical and its properties when
we examine the obviousness of a composition of matter claim, it is this invention as
a whole, and not some part of it, which must be obvious under 35 USC 103. Cf. In
re Papesch, 50 CCPA 1276, 315 F.2d 381, 137 USPQ 43 (1963).”
On these facts, we are constrained to reach the conclusion that the examiner
failed to provide the evidence necessary to support a prima facie case of
obviousness for the invention as a whole. While a person of ordinary skill in the art
may possess the requisite knowledge and ability to modify the protocol taught by
the combination of Wang, Kimmel, and Hitzman, the modification is not obvious
unless the prior art suggested the desirability of the modification. In re Gordon, 733
F.2d 900, 902, 211 USPQ 1125, 1127 (Fed. Cir. 1984). Here, the examiner
identifies no such reason to modify the references as applied.
Accordingly, we reverse the rejection of claims 1, 3-5 and 7-13 under
35 U.S.C. § 103 as obvious over Wang in view of Hitzman and further in view of
Kimmel.
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