Appeal No. 1999-1407
Application No. 08/295,744
the synthesis of certain oligomers fails to ‘give adequate yields’ with one
reagent….” Nevertheless, appellants note that Mitchell “in fact, shows that those
skilled in the art seeking higher yields have at their disposal an alternative reagent
that is said to be ‘highly effective’ in the synthesis of such oligomers….” We agree
with appellants.
Finally, the examiner relies on Caruthers (Answer, page 5) to teach “[i]f DNA
analogues are to be tested as potential therapeutic agents, gram and even kilogram
quantities of various analogues must be produced in homogenous form. Clearly the
chemistry needed to accomplish this goal is beyond our present capabilities….” To
this appellants’ argue first (Brief, page 7) that the “reference … states that ‘[r]ecent
advances in DNA chemistry now make it possible for biochemists, molecular
biologists and cell biologists to prepare and use synthetic DNA’ (page 22, section
8)” [alteration original]. Appellants’ then argue (id.) that while Caruthers:
indicates that it can be difficult to produce oligonucleotide analogs
both in kilogram quantities and in homogeneous form …, the
reference nowhere so much as suggests that those skilled in the art
would not be able to produce such compounds in lesser quantities
and/or in a form that is not entirely homogeneous.
We agree with appellants. From this reference, the examiner’s concern
appears to be the ability to make sufficient quantities of DNA analogues necessary
to test “potential therapeutic reagents.” The claims, however, are not drawn to
“therapeutic reagents,” instead, they are drawn to compounds. According to the
specification (page 7) the claimed compounds have use in diagnostic applications.
As appellants point out (Brief, page 7) Caruthers “nowhere so much as suggests
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