Appeal 2007-2363
Application 10/253,967
Claim 1 is drawn to a method of detecting the presence of a target
nucleic acid, wherein the target nucleic acid has two target regions. As
discussed above, when the naturally occurring mismatch of Guo is an
insertion, the portions of the target flanking the insertion read on “a first
target region characteristic of said target nucleic acid sequence,” and “a
second target region characteristic of the target nucleic acid sequence.”
Appellants argue further that Guo fails to anticipate the claim as “the
single, double, or triple mismatched duplexes disclosed by Guo do not
constitute ‘a spacer and an intervening sequence’ according to the claims.”
(Br. 8). As discussed above, however, claim 1 does not require that the
spacer be present in the probe, and when the naturally occurring mismatch is
an insertion, it reads on the intervening sequence. Note that a reference need
not have described an actual reduction to practice of an invention in order to
serve as an anticipatory reference. In re Siveramakrishnan, 673 F.2d 1383,
1384, 213 USPQ 441, 442 (CCPA 1982); In re Donohue, 766 F.2d 531, 533,
226 USPQ 619, 621 (Fed. Cir. 1985).
Appellants argue further that the claims do not require perfect
complementarity, and thus do not encompass a construction proposed by the
rejection wherein the “spacer region” and the “intervening sequence” are the
same length of 1, 2, or 3 bases (Br. 11). Such a construction, Appellants
assert, Guo would “violate the claim requirement that the two probe regions
and the two target regions not be simultaneously contiguous.” (Id. at 13
(emphasis in original)).
In the interpretation discussed above, however, there is no spacer
region and the intervening region is at least one nucleotide, therefore,
Appellants’ arguments are not persuasive. Moreover, while the claims do
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