Appeal No. 2001-0499 Page 4
Application No. 08/945,731
It would have been obvious to one of ordinary skill in the art at the time of
the instant invention to combine the teachings of Itoh et al., Hoffman et al.,
Kawaguchi et al. and Kausch et al. to produce the instant invention because Itoh
et al., Hoffman et al., Kawaguchi et al. and Kausch et al. were all using
acrylamide polymers with a copolymer which would adsorb and desorb nucleic
acids and proteins. Itoh et al. taught the use of the acrylamide polymer in bead
form, and coated onto solid supports. Hoffman et al. taught the adsorption of
nucleic acid in a low ionic strength buffer and the desorption of the nucleic acid in
a high ionic strength buffer. Kawaguchi et al. and Kausch et al. taught the
coating of polyacrylamide onto solid bead supports, and Kausch et al. taught the
polyacrylamide coated beads which comprised a magnetic compound to facilitate
the isolation of the bead with the bound DNA in a magnetic field.
That paragraph begs the question what is the “instant invention?” Patentability is
determined based upon the individual claims pending in an application, not an
“invention.” In other words, examiners do not examine the “invention” to determine
whether an applicant is entitled to a patent under Title 35 of the United States Code.
Rather, the examination is based on the individual claims appearing in the patent
application. The lack of specificity in the examiner’s statement is also highlighted in this
paragraph in that Kawaguchi and Kausch are relied upon to teach coating of
polyacrylamide onto solid bead supports and polyacrylamide coated beads comprised
of a magnetic compound respectively. Neither of these requirements is found in claim 3
on appeal.
An example of an unsupported assertion made by the examiner is found at page
4 of Paper No. 10 where the examiner states:
While Itoh et al. did not specifically teach the use of a low ionic strength
binding buffer nor the increased ionic strength of an eluting buffer, one of
ordinary skill in the art would know that the use of an affinity matrix would require
the use of elements such as a low ionic strength binding buffer and an increased
ionic strength buffer to elute the bound nucleic material.
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