Appeal No. 2004-1967 Page 11
Application No. 09/027,439
1505 bases in length, while Accession Nos. X96964 and X80726 are 1488 and 1467
bases in length, respectively. Id. Therefore, neither is long enough to meet the
requirements of claim 47 or 48. With respect to claim 53, the prior art sequences are
not only too short to meet the requirements of the claim, they contain 5 and 10
mismatches, respectively. Answer, pages 11-12. The examiner has not established
that either prior art molecule would be “capable of base-pairing according to the
standard Watson-Crick complementarity rules,” as required by the claim. Again, as
discussed above, 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.
With respect to claims 55-56, the examiner has not established that either of the
prior art sequences would be capable of specifically targeting S. sonnei, given the
mismatches between the prior art and claimed sequences.
The rejection of claims 47, 48, 53 and 55-58 under 35 U.S.C.§ 102 (a) as
anticipated by Genbank Accession No. X96964 or X80726 is reversed.
V. Obviousness
Claims 47, 48, 53 and 55-58 stand rejected under 35 U.S.C.§ 103 (a) as
unpatentable over Genbank Accession No. A14565 in view of Dyson. We reverse this
rejection with respect to claims 48, 53 and 55-58, but affirm it with respect to claim 47.
Genbank Accession No. A14565 sets forth the DNA sequence encoding the 16S
ribosomal RNA of E. coli. With respect to claim 48, Accession No. A14565 is 1541
bases in length, and is therefore too long to be “an isolated nucleic acid molecule
consisting of SEQ ID NO:3” (emphasis added). With respect to claim 53, the extra
nucleotide residues are of no moment because the claim uses open language, but there
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007