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)
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