Appeal No. 2003-0903 Page 7
Application No. 09/534,366
used in the prior art in combinations of a single RT primer and a single PCR
primer. The examiner has pointed to nothing in Fislage that would have
suggested using more than one of each primer in a given reaction.
The only suggestion of multiple primers pointed to by the examiner is in
Liang ‘672. That statement, however, falls short of the specificity required to
support a prima facie case under § 103. All Liang ‘672 says is that more than
one RT or PCR primer can be used in a given reaction; the reference then goes
on to say that the number of primers should be low enough that all the individual
cDNAs can be isolated. The examiner has not explained how this limited
suggestion would have led those skilled in the art to a process using thirteen and
twenty primers, respectively, in the RT and PCR reactions.
In addition, we find no explanation by the examiner of why it would have
been obvious to include any of Fislage’s PCR primers in the RT reaction. Fislage
discloses that the 11mer RT primers were designed to hybridize in the 3’ regions
of bacterial RNA, while the 10mer PCR primers were designed to hybridize in the
5’ regions of the bacterial RNA. See the abstract. That is, the PCR primers were
designed to hybridize to the wrong end of the bacterial RNA to serve as primers
for reverse transcription; using them for reverse transcription would have been
expected to send the reverse transcript directly off the 5’ end of the RNA. The
examiner has provided no explanation of why it would have been obvious to
include any of these primers in the RT reaction, when they would have been
expected to be inoperative for reverse transcription.
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