Ex Parte Mohammed - Page 14

                Appeal 2007-3395                                                                               
                Application 10/260,733                                                                         
                      specification and “could permit some variation in a genome resulting                     
                      in a broad range of percentage complementarity representing a                            
                      genome” (Answer at 9).                                                                   
                 [44] According to the Examiner, “claim 1 is broad and can represent a                         
                      bacterial genome which do not contain intronic sequences, thus the                       
                      cDNA population [of Bao] does read on bacterial genome and the                           
                      assertions drawn to labeled cDNA genome” (Answer at 9).                                  
                 [45] Appellant also argues that Kuukasjärvi teaches using dilutions to                        
                      obtain a suitable concentration of DNA to be used as a starting                          
                      material for DOP-PCR and, therefore, does not cure the deficiencies                      
                      of Bao (Br. at 7).                                                                       
                 [46] The Examiner responds that the motivation in obviousness rejections                      
                      need not be the same as Appellant’s (Answer at 10).                                      
                 [47] According to the Examiner, Kuukasjärvi teaches that serial dilutions                     
                      of the starting DNA template for PCR amplification shows that small                      
                      amounts of DNA could be used to accurately detect genetic                                
                      mosaicism in CGH assays and provides a reasonable expectation of                         
                      success of detecting genetic variation in each cell type of a cell                       
                      population (Answer at 10-11).                                                            
                      Other findings of fact are cited as necessary below.                                     
                III. Obviousness                                                                               
                      A claimed invention is not patentable if the subject matter of the                       
                claimed invention would have been obvious to a person having ordinary skill                    
                in the art.  35 U.S.C. § 103(a); KSR Int'l Co. v. Teleflex, Inc., 127 S.Ct. 1727,              
                82 USPQ2d 1385 (2007); Graham v. John Deere Co. of Kansas City, 383                            
                U.S. 1 (1966).  Facts relevant to a determination of obviousness include (1)                   

                                                      14                                                       

Page:  Previous  3  4  5  6  7  8  9  10  11  12  13  14  15  16  17  Next

Last modified: September 9, 2013