Appeal No. 2001-0490 Page 7
Application No. 08/524,206
the first segment to the third segment, and the first and third segments are
complementary to each other.
Instead, appellants argue that the oligonucleotide disclosed by Chu ‘522 is
not double stranded DNA (dsDNA). According to appellants (Brief, bridging
paragraph, pages 11-12):
It is a basic and fundamental fact of molecular biology that
double stranded DNA consists of two DNA strands that are linked
to one another only by base pairing (i.e., hydrogen bonding)
between nucleotide bases that make up each of the strands; there
is no form of covalent linkage between the two DNA strands that
make up double stranded DNA.
However, as the examiner points out (Answer, page 14), “[t]his restriction on
dsDNA is not disclosed in the instant specification.” Furthermore, claim 1 recites
“a composition comprising dsDNA having a sequence specific for binding to a
transcription factor which modulates the transcription of at least one gene….”
Even assuming the specification did restrict the meaning of dsDNA, the use of
the open transitional term “comprising” does not exclude the presence of a linker
region connecting the two complementary strands of DNA together, as in Chu
‘522.
For the foregoing reasons, we find no error in the examiners rejection2.
Our reasoning applies equally to Chu ‘522 and Chu ‘985. Accordingly, we affirm
the rejection of claim 1 under 35 U.S.C. 102(a) as anticipated by Chu ‘522, or
under 102(e) as anticipated by Chu ‘985. As discussed supra claims 3 and 6 fall
together with claim 1.
2 We recognize the examiner’s reliance on Bielinska as evidence that the HIV enhancer
sequence taught by both Chu references is an NF-κB binding site. In re Samour, 571 F.2d 559,
563, 197 USPQ 1, 4-5 (CCPA 1978).
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