Appeal No. 2004-1967 Page 13
Application No. 09/027,439
detecting accession number A14565” since “[s]uch methods are . . . exemplified by
Dyson” (Answer, page 14), and “the complement of [ ] accession number [A14565]
would hybridize to SEQ ID NO[:] 3 because the effect of the [5] mismatches would be
diminished due to the length of the [molecule].” Id.
Appellants argue only that the complement of Accession No. A14565 is not
disclosed in the reference, and that no evidence of motivation to prepare a
complementary sequence has been presented. Brief, page 7. This argument is not
persuasive. We think it is fair to say that a description of any single-stranded nucleic
acid is a constructive description of its complement, as it is made from – or serves as a
template for – a complementary strand of nucleic acid. In our opinion, Accession
Number A14565 anticipates the subject matter of claim 47 (and anticipation is the
epitome of obviousness, In re May, 574 F.2d 1082, 1089, 197 USPQ 601, 607 (CCPA
1978)). Even if this were not the case, however, the examiner cited Dyson as evidence
of a motivation to prepare the complement of accession number A14565, yet appellants
did not address this evidence in any way. We hold that the examiner has established a
prima facie case of obviousness with respect to claim 47, which appellants have not
overcome by evidence or argument.
The rejection of claim 47 under 35 U.S.C. § 103 (a) is affirmed.
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