Appeal No. 2006-1517 Page 9
Application No. 09/976,423
cycle sequencing kits; AmpliTaq Cycling Sequencing Kits; . . . etc. Each of
these products is capable of detecting the presence of variant alleles of two
or more genes. Applied Biosystems teaches numerous computer
programs which are sold with the DNA analysis system, for example.
Examiner’s Answer, page 7. Similarly, with respect to Perkin Elmer, the examiner
reasoned that
Perkin Elmer provides several products which are packaged for
distribution, kits, which allow for detecting the presence of variant alleles
of two or more genes. First, Perkin Elmer teaches the GeneAmp PCR
Reagent Kit with AmpliTaq DNA polymerase. . . . This kit provided by
Perkin Elmer contains reagents which allow for detection of variant alleles
of two or more genes.
Id., page 9.
Appellant argues that “the Examiner has ignored [certain] claim elements entirely
i.e., reagents sufficient to detect the presence or absence of variant alleles in two or
more genes associated with two or more conditions selected from the specified group
consisting of BChE, CYP2D6, F5, F2, CACNAIS, MTHFR, MTR, MTRR, CBS, TNFα
and TNFβ. . . . It is a matter of simple fact that the 1993 Applied Biosystems Product
Catalog is insufficient, standing alone, to detect the alleles of the perioperative genomic
profile kits of the present invention without more, i.e., specific reagents to do so.”
Appeal Brief, page 24. See also Reply Brief, page 11 (arguing that Perkin Elmer does
not teach kits comprising parts that are “sufficient to detect the presence or absence of
variant alleles in two or more genes associated with two or more conditions selected
from” the recited genes).
We agree with Appellant that neither Applied Biosystems nor Perkin Elmer
disclose the kits defined by instant claims 72 and 106. As Appellant points out, the
claimed kits must include reagents (or component parts) “sufficient to detect” variant
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