Appeal No. 1999-1266
Application No. 08/859,472
What is missing from the examiner's analysis and review of the facts before us, is any
direction or suggestion to be found in the prior art, including Abramson, to select the particular
enzyme required by claim 16, from those described by Abramson, for use in a PCR
hybridization process as presently claimed. As pointed out by appellant (Brief, page 6):
Abramson teaches "DNA polymerases which have been altered or mutated
such that a different level of 5' to 3' exonuclease activity is exhibited from that
which is exhibited by the native enzyme." . . . That is, Abramson teaches DNA
polymerases which have both attenuated and enhanced 5'->3' exonuclease
activity.
Taken as a whole, we agree with appellant that "Abramson's teaching is . . . somewhat
ambiguous." (Brief, page 6). However, in the only situation where Abramson addresses
which enzyme to use in a hybridization reaction in a homogenous assay as presently claimed,
Abramson states (column 32, lines 39 through column 33, line 8):
[t]he thermostable DNA polymerases of the present invention which have
increased or enhanced 5' to 3' exonuclease activity are particularly useful in the
homogeneous assay system . . . which generates signal while the target
sequence is amplified, thus, minimizing the post-amplification handling of the
amplified product which is common to other assay systems. Furthermore, a
particularly preferred use of the thermostable DNA polymerase with increased
5' to 3' exonuclease activity is in a homogeneous assay system which utilizes
PCR technology.
The examiner urges that (Answer, paragraph bridging pages 6-7):
[t]he specific teaching cited by Appellant is, in fact, directed towards a
homogenous assay in which Abramson states "nucleic acid polymerase having
a 5' to 3' nuclease activity under conditions sufficient to permit the 5' to 3'
nuclease activity of the polymerase to cleave the annealed, labeled
oligonucleotide and release labeled fragments." This homogenous assay it
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