Appeal No. 2004-1967 Page 12
Application No. 09/027,439
are five mismatches and one gap between the sequences of A14565 and SEQ ID NO:3
(Answer, page 14), thus A14565 is not “an isolated molecule comprising SEQ ID NO:3”
(emphasis added) – nor would its complement be capable of base-pairing to SEQ ID
NO:3 according to the Watson-Crick rules of complementarity. With respect to claims
55-58, A14565 represents the sequence of E. coli 16S rRNA, and would not appear to
be capable of targeting particular species of Shigella.
The examiner has not recognized any of these differences between A14565 and
the subject matter of claims 48, 53 and 55-58 and has not identified any reason to
modify A14565 to meet the specific limitations of these claims. Nevertheless, the initial
burden of unpatentability rests on the examiner (In re Oetiker, 977 F.2d 1443, 1446, 24
USPQ2d 1443, 1445 (Fed. Cir. 1992)), and it is well established that there must be a
reason, suggestion or motivation to lead an inventor to modify a reference in the
manner claimed (Pro-Mold & Tool Co. v.Great Lakes Plastics, Inc., 75 F.3d 1568, 1573,
37 USPQ2d 1626, 1629 (Fed. Cir. 1996)).
Accordingly, the rejection of claims 48, 53 and 55-58 under 35 U.S.C.§ 103 (a) is
reversed.
Claim 47 stands on a different footing. Claim 47 is directed in part to “a nucleic
acid substantially complementary to [an isolated nucleic acid molecule comprising SEQ
ID NO: 3] which is capable of hybridizing to the nucleic acid molecule under [specified]
stringent conditions[.]” The examiner notes that the specification teaches that
mismatches can be tolerated under the claimed hybridization conditions, and also that
the effect of mismatches decreases with increasing probe length. Answer, page 14.
According to the examiner, “it would have been prima facie obvious for one skilled in the
art to construct the complement of accession number A14565 . . . for the purpose[ ] of
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