Appeal No. 2001-2643 Page 4
Application No. 08/117,363
claimed invention. Furthermore, Ca[r]rico discloses . . . the non-
critical nature of the various 5’ substitutions used for tethering
labels to a nucleic acid. Ca[r]rico discloses, for example at col. 7,
lines 15 and 22, that R1 is a “bond or a chain.”
Examiner’s Answer, pages 3-4.
Appellants argue that the “Examiner has not identified any reason” why a
person of ordinary skill would have been motivated to modify the cited references
as proposed. See the Appeal Brief, page 4. Appellants argue that both Latham
and Matteucci propose one group of moieties as being appropriate for terminal
linkage to the 2’ position and an entirely different group as appropriate for
internucleotide (3’ or 5’) linkages. Appeal Brief, page 5. Thus, Appellants argue,
a person of ordinary skill in the art
would not have been motivated to modify the teachings of the prior
art in the manner proposed by the Examiner. There is simply no
reason why a person of ordinary skill would have been motivated to
take one of the non-terminal, 3’-5’ internucleoside linkages
disclosed by the Matteucci reference (such a linkage being
covalently bound at both of its ends) and then attach it in a terminal
manner at the 2’-position (so as to be covalently bound at only one
end).
Id.
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial
burden of presenting a prima facie case of obviousness. Only if that burden is
met, does the burden of coming forward with evidence or argument shift to the
applicant.” In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir.
1993). “Where claimed subject matter has been rejected as obvious in view of a
combination of prior art references, a proper analysis under § 103 requires, inter
alia, consideration of two factors: (1) whether the prior art would have suggested
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007