Appeal No. 1999-1266
Application No. 08/859,472
primers in the presence of a hybridization probe which is an oligonucleotide as defined in
claim 16 in the presence of a polymerase enzyme substantially lacking any 5'->3' exonuclease
activity.
It is well-established that before a conclusion of obviousness may be made based on
a combination of references, there must have been a reason, suggestion, or motivation to lead
an inventor to combine those references. Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc.,
75 F.3d 1568, 1573, 37 USPQ2d 1626, 1629 (Fed. Cir. 1996) (citation omitted). Moreover,
the prior art must also establish that one would have had a reasonable expectation of
achieving the present invention, i.e., a reasonable expectation of success. In re Vaeck, 947
F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991). Both the suggestion and the
reasonable expectation of success must be found in the prior art, not in appellant’s disclosure.
In re Dow Chemical Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed. Cir. 1988).
The examiner relies on Link as disclosing a (Answer, page 4):
method for combined PCR amplification and hybridization probing comprising
the steps of contacting a target sequence with two PCR primers, a polymerase
such as Taq which lacks 3' to 5' exonuclease activity (page 13, lines 31-37 and
including an oligonucleotide probe which was doubly labeled (page 13, line 1)
which probes “are not able to act as primers in the PCR or other primer
directed reactions (page 11, lines 12-14)” and subjecting the mixture to thermal
cycling to amplify target sequence (page 13, lines 31-37).
The examiner acknowledges that Link does not teach (id.):
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