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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