Appeal No. 2001-1432 Page 2
Application No. 08/469,416
double patenting as unpatentable over claims 1-16 of U.S. Patent No. 4,535,058 in view
of Wallace.1
We reverse the examiner’s rejection, but enter a new ground of rejection under
the provisions of 37 CFR § 1.196(b).
DISCUSSION
Double Patenting
The present claims are directed to a nucleic acid probe capable of recognizing a
single base difference within a restriction site of an oncogene or its corresponding
proto-oncogene, while the patented claims are directed to assays “for detecting the
mutation of a proto-oncogene to an oncogene” wherein the proto-oncogene or the
oncogene is digested “with a restriction enzyme specific for a cleavage site present only
in either [the] proto-oncogene or [the] oncogene” (patented claim 1). Wallace describes
the effect of single base pair mismatches on the hybridization kinetics of DNA probes to
wild-type MP174 DNA, and concludes that “[the] system represents a useful model for
the study of the effect mismatched base pairs on duplex formation and [thermal]
stability” (pages 3543 and 3544).
The examiner’s rationale for concluding that the present claims are unpatentable
over the patented claims is essentially that “the patent claims [involve] a single base
pair mutation and Wallace teaches that when one needs to detect a single base pair
mutation one constructs a probe” (Answer, pages 4 and 5).
Without belaboring the record, we will simply say that we agree with appellants
to the extent they argue that the claimed “nucleic acid probes . . . are not ‘obvious
1 Wallace et al. (Wallace), “Hybridization of synthetic oligodeoxyribonucleotides
to MP174 DNA: the effect of single base pair mismatch,” Nucleic Acids Research, Vol.
6, No. 11, pp. 3543-3556 (1979).
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