Appeal No. 2004-1967 Page 9
Application No. 09/027,439
another sequence . . . (hereinafter termed ‘Sequence B’) which is completely
complementary to positions 955-993 of SEQ ID NO[:] 3, positions 954-992 of SEQ ID
NO[:] 5, and positions 953-991 of SEQ ID NO[:] 6.” Answer, page 7. Nevertheless, we
agree with appellants that neither of Hogan’s probes anticipates the subject matter of
claims 47, 48, 53 or 55-58.
Claims 47, 48 and 53 are directed to nucleic acid molecules comprising or
consisting of SEQ ID NO: 3, 4, 5 or 6; RNA equivalents of SEQ ID NO: 3, 4, 5 or 6; and
either complete or substantial complements of SEQ ID NO: 3, 4, 5 or 6. SEQ ID NOS:
3, 4, 5 and 6 are 1506, 1505, 1453 and 1505 bases in length, respectively. Hogan’s
Sequences A and B are 30 and 39 bases in length, respectively. Therefore, neither
Sequence A nor Sequence B is long enough to meet the requirements of claim 47, 48
or 53. We see no basis for the examiner’s assertion that complete or substantial
complements of SEQ ID NO: 3, 4, 5 or 6 need not extend the full length of SEQ ID NO:
3, 4, 5 or 6 to anticipate the claims, and that “the sequences of Hogan meet the claim
requirements because they are [ ] completely complementary to regions within SEQ ID
NOS[:] 3, 5 and 6.” Answer, page 10. To be “equivalent,” “complementary” or
“substantially complementary,” to SEQ ID NO: 3, 4, 5 or 6, a molecule must extend the
full length of SEQ ID NO: 3, 4, 5 or 6, not just a portion of it. The requirement that the
molecule be capable of base-pairing with SEQ ID NO: 3, 4, 5 or 6 according to standard
Watson-Crick rules (i.e., completely complementary), or capable of hybridizing to SEQ
ID NO: 3, 4, 5 or 6 under stringent conditions (i.e., substantially complementary), is an
additional, not alternative, limitation.
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