Appeal No. 2004-1770 Page 6
Application No. 09/895,050
noted by Hirschbein et al., of an invention which provides the use of very
dry reagents and solvents, and environment free of water (inherently
including allowing sufficient time for evaporation to leave a solid activator)
during the synthesis of the monomers that is very helpful and which allows
the use of less phosphorylating [sic, phosphitylating] agent in the
monomer syntheses and the generation of less of the impurity.
Examiner’s Answer, page 4.
Appellant argues that the examiner has misinterpreted Hirschbein’s disclosure.
See the Appeal Brief, page 6: “Hirschbein et al. makes it clear that ‘dry’ is used in the
sense of no water being present, not that a solid form of the activator is somehow
present. See in particular, column 12, lines 35-39: ‘A great amount of care should be
exercised to use very dry (free from water) monomer, activator, and solvent for the
coupling step.’” Appellant also argues that Hirschbein’s Example 2, which the examiner
relies on, deals only with the preparation of phosphoramidite monomers, not linking
monomers into oligomers. Appellant concludes that “while the examiner correctly points
out that Hirschbein et al. refers to using a dry solvent (i.e. free of water) for the activator,
he has not pointed to anything in Hirschbein et al. where this dry solvent is allowed
sufficient time to evaporate to leave a solid activator before a biomonomer is then
applied.” Appeal Brief, page 7.
We agree with Appellant that the examiner has not made out a prima facie case
of obviousness. In particular, and for the reasons stated in the Appeal Brief, we agree
that the examiner has not adequately explained how Hirschbein would have suggested
the claim limitation requiring allowing sufficient time for evaporation to leave a solid
activator before depositing the biomonomer.
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