Ex Parte Mohammed - Page 15

                Appeal 2007-3395                                                                               
                Application 10/260,733                                                                         
                scope and content of the prior art, (2) any differences between the claimed                    
                invention and the prior art, (3) the level of ordinary skill in the art, and (4)               
                relevant objective evidence of obviousness or non-obviousness.  KSR, 127                       
                S.Ct. at 1734, 82 USPQ2d at 1388; Graham, 383 U.S. at 17-18.  All                              
                limitations of claimed invention must be taught or suggested by the prior art                  
                to establish prima facie obviousness.  In re Royka, 490 F.2d 981, 985, 180                     
                USPQ 580, 583 (CCPA 1974).                                                                     
                      The dispositive issue here is whether Bao teaches or suggests a                          
                method comprising contacting an array of nucleic acid target elements with                     
                three populations of differentially labeled nucleic acid populations or                        
                segments, each of which comprises a substantially complete complement of                       
                its respective genome.  Bao describes cohybridizing first, second and at least                 
                one reference nucleic acid populations, each labeled with a different                          
                fluorescent marker, to an array of nucleic acid target elements immobilized                    
                on a solid substrate (FF 19).  Bao teaches that the nucleic acid target                        
                elements comprise total genomic DNA (FF 20).  The first nucleic acid                           
                population comprises a mixture of cDNA complementary to the mRNA                               
                representative of gene expression in the tissue sample and is labeled with a                   
                first marker, e.g., a red fluorescent dye (FF 22).  The Examiner found that                    
                this population of cDNA sequences reads on the second sample of step (a) of                    
                claim 1 (FF 38).  However, the method of claim 1, step (a) requires a second                   
                sample comprising a plurality of genomic nucleic acid segments comprising                      
                a substantially complete complement of the second genome.  Since cDNA is                       
                DNA copied from an mRNA by reverse transcription, cDNA lacks the                               
                introns.  Therefore, as argued by Appellant (FF 41), the cDNA population                       
                used in Bao’s method cannot be genomic DNA because it lacks introns.                           

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