Appeal No. 2003-0903 Page 4
Application No. 09/534,366
developed by Fislage et al. using non-anchored primers that would
permit the initiation of cDNA in prokaryotes. . . .
Through a detailed statistical evaluation of the coding regions
extracted from bacterial genetic databases, Fislage et al. designed
ten RT primers for the 3’ end and ten PCR primers for the 5’ end of
prokaryotic mRNA. These primers have increased specificity in the
3’ region and the 5’ regions surrounding E. coli genes and
decreased specificity for rRNA or other abundant small RNA
species such that mRNA were preferentially transcribed. The
RTPCR methodology of Fislage et al. used one RT primer in
combination with a single PCR primer for an RTPCR reaction,
which was subsequently repeated for each primer set so that 100
different amplifications were run for every sample. . . .
Pages 11-12.
The specification discloses an improvement on the Fislage method. The
disclosed process uses a combination of Fislage’s prokaryotic primers in order to
“improve differential display analysis via one amplification, rather than requiring a
series of amplifications.” Page 12.1 The specification discloses that “[a]fter a
systematic analysis of several primer combinations and incorporation of several
new primers, one combination appeared most effective for amplifying mRNA to a
significant level.” Page 21. That combination uses all ten of Fislage’s RT
primers plus three of Fislage’s PCR primers in the reverse transcription reaction,
and uses all twenty of Fislage’s primers in the PCR reaction. See id.
Discussion
Claim 1 defines the basic method that is claimed. The method comprises
sequential reverse transcription (RT) and PCR reactions, carried out in parallel
1 The specification does not expressly concede that the primers used therein are the same as
Fislage’s, but the sequence of the primers (specification, page 19) appears to be the same as
those disclosed by Fislage. Appellants have not disputed the examiner’s contention that the
specification’s primers are the same as those of Fislage.
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