Appeal No. 2006-3207 Page 6
Application No. 09/565,191
support and then brings a solution with labeled oligonucleotides (e.g., DNAs) of interest
in contact with the supported PNAs. See, e.g., id. at 4-9 & Example 4 at 19-20. Thus,
rather than labeling any of the affixed PNAs, Kleiber labels the target oligonucleotide.
Thus, it appears Kleiber’s approach is directed to the same problem as Appellants’ and
is based on a theory similar to that on which Appellants’ approach is based, i.e.,
blocking non-specific binding with an unlabeled moiety. However, Kleiber’s approach
necessarily requires non-labeled PNA molecules on the solid support.
While recognizing the absence of labeled PNA, the Examiner fails to point us to
any reference that would fill the gap, or to explain why one skilled in the art would do so
in the absence of such a reference. Lee is relied upon for its teaching of “multiplex
detection using multiple different oligonucleotides with independently detectable
fluorescent moieties”. Answer at 4. Lee is not relied upon for disclosure of labeled PNA
probes. Matthews, the third cited reference, does not appear to fill this void. In the
absence of any teaching or suggestion to use labeled and unlabeled (or differently
labeled) PNA probes, it would not have been obvious to one of ordinary skill in the art to
make the claimed invention. Thus, we reverse.
Other Issues
Appellants acknowledge prior art utilizing labeled and unlabeled nucleic acid
probes. See “Background of the Invention” in the Specification at 4-6. To the extent the
prior art discloses using nucleic acid probes in the manner Appellants are now using
PNA probes, i.e., competitively blocking sequences closely related to a target, the
claimed invention may have been obvious to a skilled artisan. If such teachings are
identified, the Examiner should again consider the § 103 question, given the clear prior
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