Appeal No. 1998-2648
Application No. 08/473,888
In this case, the examiner has provided no evidence or scientific
reasoning to suggest that the oligonucleotides disclosed by Toole comprise at
least one “synthetic residue” having the properties recited in the claims. Rather,
the examiner states that “Applicant provides no definition for the term ‘synthetic’
in the specification and provides no basis in the specification for distinguishing
the term ‘analog’ as being anything other than a synonym to the word ‘synthetic.’”
Examiner’s Answer, page 9. The examiner’s position therefore seems to be that
the nucleotide analogs disclosed by Toole are encompassed within the instant
claims’ recitation of “synthetic residue.” With respect to the specific parameters
recited in the claims, the examiner argues that it is Appellants’ burden to show
that the prior art compounds do not meet these limitations. See the Examiner’s
Answer, page 11 (“The patent office lacks the facilities to determine whether any
specific oligonucleotide meets the functional tests such as specific bond
angles.”).
The examiner’s analysis is incorrect. The burden shifts to the applicant
only if the examiner can show, by evidence or scientific reasoning, a reasonable
basis for concluding that the prior art product meets all the limitations of the
claims. The examiner has provided no basis for such a conclusion in this case.
In fact, the evidence of record suggests that the oligonucleotides disclosed
by Toole do not comprise a “synthetic residue” having the parameters recited in
the claims. Toole states that the oligos disclosed therein bind only to purine-rich
targets. See page 3, lines 12-15 (“It should be said, initially, that in all instances,
a concentration of purine residues along a portion of a single strand of the
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