Appeal No. 2002-0780 Page 7
Application No. 09/128,340
In addition, the examiner relies on Robbins to teach “a temperature of 4°C
to 60°C (col. 3, lines 18-55).” Answer, page 5. We are unable to identify this
temperature range at the section cited by the examiner. Instead, at column 4,
lines 3-5, Robbins teaches “[t]he incubation of the endogenous nuclease is done
at 40°C to 60°C., a pH of 5 to 8, and for a time of 15 to 120 minutes.” As
discussed above, this incubation is to hydrolyze nucleic acid present in the
preparation, and is therefore inconsistent with the Robson and Buck references.
Furthermore, we fail to see the nexus between the recited temperature used for
the enzymatic hydrolysis of nucleic acid and the sonication temperature set forth
in appellants’ claimed invention.
Upon return of the application, the examiner should take a step back and
reevaluate whether the references can be properly combined. If the examiner
finds that the rejection should be maintained, the examiner should issue an
appropriate Office action setting forth such a rejection, using the proper legal
standards and clearly explaining the facts relied upon in support of such a
rejection.
2. Does Robson teach away from the claimed invention?
In determining whether the claimed invention is obvious, a prior art
reference must be read as a whole and consideration must be given where the
reference teaches away from the claimed invention. Akzo N.V., Aramide
Maatschappij v.o.f. v. United States Int’l Trade Comm’n, 808 F.2d 1471, 1481, 1
USPQ2d 1241, 1246 (Fed. Cir. 1986).
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