Appeal No. 2003-1805 Page 9
Application No. 09/079,892
Nishi. . ..” (Appeal Brief, page 11) (emphasis in each original). Appellants urge that
claim 25 must be read such that the claimed method detects only the polynucleotides
recited in claim 7. We disagree with appellants’ claim construction.
First, appellants’ position does not take into account that claim 25 explicitly reads
upon a negative result, i.e., the probe comprising at least 20 contiguous nucleotides will
not hybridize to any nucleotide sequence in the sample. This is seen in that claim 25 b)
includes detecting the absence of a hybridization complex. Since appellants have not
contravened the basic premise of the examiner’s obviousness rejection, i.e., it would
have been obvious to one of ordinary skill in the art to use a probe comprising at least
20 contiguous nucleotides based upon the polynucleotide sequence described in Nishi
‘713 in a hybridization method, the performance of such a method that results in a
negative result reads directly upon claim 25. Thus, the examiner’s rejection can be
sustained on this basis.
Second, we do not read claim 25 in the manner in which appellants do. In our
view, claim 25 is not limited “only to detecting the target polynucleotides comprising the
polynucleotides recited in claim [] 7 . . ..” Appeal Brief, page 12. Once a probe
comprising at least 20 contiguous nucleotides is constructed based upon the
polynucleotide sequence described in Nishi ‘713, the use of that probe in a hybridization
method will result in the hybridization complex being formed if the probe hybridizes to
any polynucleotide sequence in the sample under the hybridization conditions used.
Thus, an appropriately constructed probe based upon the polynucleotide sequence
described in Nishi ‘713 will hybridize to a polynucleotide sequence such as that of Nishi
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