Appeal No. 2004-1967 Page 8
Application No. 09/027,439
occurring products.” Answer, page 4. Nevertheless, these claims are directed to probes
that target individual Shigella species. As discussed above, “a target nucleic acid
sequence contains a species-specific or genus specific nucleotide” (Specification, page
17) and targeting probes are “complementary to areas of rRNA or rDNA having species-
specific nucleotides or genus-specific nucleotides” and are capable of “detecting and
discriminating . . . the presence of rRNA or rDNA molecules of Shigella species” (id.,
page 13).
The examiner has provided no evidence of any naturally occurring product
capable of targeting (i.e., distinguishing between) Shigella flexneri, S. sonnei, S.
dysenteriae and S. boydii, as required by the claims. The rejection of claims 55-58
under 35 U.S.C. § 101 is reversed.
III. Anticipation by Hogan
“[E]very limitation of a claim must identically appear in a single prior art reference
for it to anticipate the claim.” Gechter v. Davidson, 116 F.3d 1454, 1457, 43 USPQ2d
1030, 1032 (Fed. Cir. 1997). Moreover, “the Patent Office has the initial burden of
coming forward with some sort of evidence tending to disprove novelty.” In re Wilder,
429 F.2d 447, 450, 166 USPQ2d 545, 548 (CCPA 1970).
Claims 47, 48, 53 and 55-58 stand rejected under 35 U.S.C.§ 102 (a) and (e) as
anticipated by Hogan. According to the examiner, Hogan describes “a probe which
detects E. coli . . . (hereinafter termed ‘Sequence A’) which is completely
complementary to positions 991-1120 of SEQ ID NO[:] 3, and positions 989-1018 of
SEQ ID NO[:] 6 . . . [and] also has complementary sequences to both SEQ ID NO[:] 4,
over positions 990-1019, and SEQ ID NO[:] 5 over positions 990-1019. Hogan teaches
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