Appeal No. 1998-2648
Application No. 08/473,888
3. The anticipation/obviousness rejection.
The examiner rejected claims 1-13 as anticipated by, or alternatively as
obvious over, Toole. The examiner reasoned that Toole teaches triplex-forming
oligonucleotides composed of purines, pyrimidines, and modified base analogs,
that Toole teaches “a variety of triplex binding motifs including the pyrimidine
parallel, purine antipar[a]llel, and inverted polarity,” and that Toole teaches
oligonucleotides having a variety of backbones. Examiner’s Answer, pages 5 -6.
The examiner concluded that Toole a nticipates the instant claims, or at least, “[i]t
would have been prima facie obvious to one having ordinary skill in the art at the
time the invention was made to combine the teachings of Toole to synthesize
triplex forming oligonucleotides.” Id., page 6 .
“Under 35 U.S.C. § 102, every limitation of a claim must identically appear
in a single prior art reference for it to anticipate the claim.” Gechter v. Davidson,
116 F.3d 1454, 1457, 43 USPQ2d 1030, 1032 (Fed. Cir. 1997). “‘[I]t is
elementary that the mere recitation of a newly discovered function or property,
inherently possessed by things in the prior art, does not cause a claim drawn to
those things to distinguish over the prior art.’” In re Best, 562 F.2d 1252, 1255,
195 USPQ 430, 433 (CCPA 1977) (quoting In re Swinehart, 439 F.2d 210, 212,
169 USPQ 226, 229 (CCPA 1971)). However, “the examiner must provide some
evidence or scientific reasoning to establish the reasonableness of the
examiner’s belief that the functional limitation is an inherent cha racteristic of the
prior art” before the burden is shifted to the applicant to disprove the inherency.
Ex parte Skinner, 2 USPQ2d 1788, 1789 (Bd. Pat. App. Int. 1986).
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