Ex Parte Hendrickson

Patent Trials and Appeals Board

Jul 2, 2019

13488997 - (D) (P.T.A.B. Jul. 2, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/488,997 06/05/2012
28986 7590 07/05/2019
HARRIET M. STRIMPEL, D. Phil.
New England Biolabs, Inc.
240 COUNTY ROAD
IPSWICH, MA 01938-2723
FIRST NAMED INVENTOR
Cynthia Hendrickson
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
NEB-335-CIP-PUS 9824
EXAMINER
OYEYEMI, OLAYINKAA
ART UNIT PAPER NUMBER
1637
NOTIFICATION DATE DELIVERY MODE
07/05/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
STRIMPEL@NEB.COM
mcgrane@neb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CYNTHIA HENDRICKSON
Appeal2018-000633
Application 13/488,9971
Technology Center 1600
Before DONALD E. ADAMS, ERIC B. GRIMES, and
FRANCISCO C. PRATS, Administrative Patent Judges.
PRATS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal under 35 U.S.C. § 134(a) involves claims directed to a
method for preparing fragmented DNA for ligation. The Examiner rejected
the claims for obviousness.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellant identifies New England Biolabs, Inc. as the real party in interest.
Appeal Br. 3.
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Application 13/488,997
STATEMENT OF THE CASE
The following rejections are before us for review:
(1) Claims 18-23, rejected underpre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Marchuk,2 Mueller,3 the NEB T4 Polymerase Manual,4
Quail,5 and the NEB T4 Polynucleotide Kinase Manual6 (Ans. 2-9); and
(2) Claims 24 and 25, rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Marchuk, Mueller, the NEB T4 Polymerase
Manual, Quail, the NEB T 4 Polynucleotide Kinase Manual, and Illumina
Genome Analyzer7 (Ans. 9-11 ).
Appellant's claim 18 is representative and reads as follows:
18. A method for preparing fragmented DNA for ligation
to an adaptor comprising a single-base overhang, the method
compnsmg:
combining Taq polymerase, T4 DNA polymerase,
polynucleotide kinase, dNTPs and fragmented DNA to produce
a reaction mix;
2Douglas Marchuk et al., Construction of T-vectors, a rapid and general
system for direct cloning of unmodified PCR products, 19 NUCLEIC ACIDS
RES. 1154 (1991).
3 US 2008/0124768 Al (published May 29, 2008).
4 New England Biolabs datasheet for T4 DNA polymerase (March 2010)
( citation from Information Disclosure Statement entered July 8, 2016).
5 Michael A. Quail et al., Improved Protocols for the Illumina
Genome Analyzer Sequencing System, CURR. PROTOC. HUM. GENET. Chapter
18: Unit 18.2: pp. 18.2.1-18.2.27 (2009).
6 New England Biolabs datasheet for T4 polynucleotide kinase (retrieved by
Examiner from http://www.neb.com May 2014 (see Notice of References
Cited (PT0-892) entered January 21, 2015).
7 MULTIPLEXED SEQUENCING WITH THE lLLUMINA GENOME ANALYZER
SYSTEM (2008) (retrieved by Examiner from Illumina.com January 9, 2015
(see Notice of References Cited (PT0-892) entered January 21, 2015).
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maintaining the reaction mix at a temperature suitable for
the T4 DNA polymerase to produce blunt-ended fragments; and
raising the temperature of the reaction mix to a
temperature of at least 60°C for a period of at least 5 minutes to
denature the T 4 DNA polymerase and permit the Taq
polymerase to add a single base overhang to the blunt-ended
fragments.
Appeal Br. 14.
DISCUSSION
The Examiner's Position
In rejecting representative claim 18, the Examiner cited Marchuk as
disclosing a process of preparing DNA fragments having a single base
overhang, as recited in the claim. Ans. 2-3.
In particular, the Examiner found that Marchuk' s process involved
using T4 DNA polymerase to prepare blunt-ended fragments as recited in
Appellant's claim 18, followed by a subsequent separate step that used Taq
polymerase to add a single base overhang to the blunt-ended fragments
created by the T4 DNA polymerase, as also recited in claim 18. See id. at 3.
The Examiner found that Marchuk's process differed from the process
of Appellant's claim 18 in that Marchuk "did not teach an enzyme mixture
comprising both T4 DNA polymerase and Taq polymerase ... together." Id.
at 3.
The Examiner cited Mueller as evidence that, in processes of repairing
and amplifying DNA, it was known in the art to use enzyme blend
compositions that include both T4 DNA polymerase and Taq polymerase.
See id. at 4.
In particular, the Examiner cited Mueller as disclosing a process in
which, as recited in Appellant's claim 18, a reaction mixture containing a
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multi-enzyme blend was first subjected to a preincubation step at a
temperature suitable for activating T4 DNA polymerase, as evidenced by the
NEB T4 DNA Polymerase Manual. Id.
The Examiner cited Mueller as disclosing that, after its preincubation
step, Mueller's reaction mixture was raised to 94° C for 5 seconds, followed
by application of heat at 75° C, that is, temperatures above 60° C, as also
required in Appellant's claim 18. Id. The Examiner cited the NEB T4 DNA
Polymerase Manual as evidence that the 75° C treatment described in
Mueller would inactivate any T4 DNA polymerase in the enzyme blend. Id.
at 4-5.
The Examiner found that neither Marchuk nor Mueller disclosed
including a polynucleotide kinase, as recited in Appellant's claim 18, in a
reaction mixture that also contained T 4 DNA polymerase and Taq
polymerase. Id. at 5.
The Examiner cited Quail as evidence that, in blunt-ending/A-tailing
procedures similar to those described in Marchuk for preparing DNA
fragments with single-base overhangs for ligation purposes, it was useful to
include a T4 polynucleotide kinase in the blunting reaction mixture. Id. at
5-6.
Based on the references' combined teachings, the Examiner
concluded that it would have been obvious to perform the blunting/single-
base tailing process described in Marchuk in a single reaction mixture
containing both the blunting enzyme (T4 DNA polymerase) and the single-
base tailing enzyme (Taq polymerase) taught in Marchuk, as well as the
polynucleotide kinase disclosed in Quail. See id. at 7-8.
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The Examiner reasoned that a skilled artisan would have been
motivated to perform the blunting/tailing procedure described in Marchuk
and Quail in a single reaction mixture containing all of the required enzymes
"since the teachings of Mueller indicate that enzyme blends result in more
efficient reactions with fewer opportunities for contamination." Id. at 7.
The Examiner reasoned that a skilled artisan had a reasonable
expectation of success in performing the blunting/tailing procedure in a
single reaction mixture because, "as evidenced by Marchuk, Mueller, and
the NEB T4 DNA polymerase manual, the conditions at which the two
enzymes were active were known in the art," and also because Mueller
"describe[ d] methods for preparing and using enzyme blends, including
blends comprising a mesophilic and thermostable polymerase, that comprise
incubating the blend at different temperatures, which were selected based on
the different thermo stability of the polymerases in the blend." Id.
Analysis
As stated in In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992):
[T]he examiner bears the initial burden ... of presenting a
primafacie case ofunpatentability ....
After evidence or argument is submitted by the applicant
in response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.
Having carefully considered the arguments and evidence advanced by
Appellant and the Examiner, we find that that the preponderance of the
evidence supports the Examiner's conclusion of obviousness.
As the Supreme Court has explained, "when the question is whether a
patent claiming the combination of elements of prior art is obvious," the
relevant inquiry is "whether the improvement is more than the predictable
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use of prior art elements according to their established functions." KSR Int 'l
Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
In the present case, Appellant's claim 18 recites a process of preparing
fragmented DNA that has a single-base overhang, for ligation to an adapter
that also has a single-base overhang. See Appeal Br. 14. The process
involves first producing blunt-end fragments through the action of T4 DNA
polymerase on the fragmented DNA, and then adding a single-base overhang
(tail) through the action of the Taq polymerase. Id.
As evidenced by Marchuk and Quail, and is undisputed, the claimed
blunting/tailing process was known to provide a desirable modification of
fragmented DNA, and the enzymes recited in claim 18 were known to be
used in that process. See Marchuk 1154 "(Fragments can be made blunt-
ended by ... trim[ming] with T4 DNA polymerase (3' overhang). One
fragment can subsequently be treated with Taq polymerase in the presence
of dA TP, the other in the presence of dTTP, creating complementary one
base pair sticky ends for more efficient ligation."); see also Quail 18.2.7
(using a combination of T4 DNA polymerase and T4 polynucleotide kinase
in blunt-end preparation).
Neither Marchuk nor Quail, however, describes performing the
blunting/tailing process by combining all of the enzymes in a single reaction
mixture, initially maintaining the mixture at a temperature that allows the T4
DNA polymerase to produce blunt ends, and then inactivating the T4 DNA
polymerase by raising the temperature to over 60° C, the higher temperature
allowing the Taq polymerase to add the single-base overhang to the blunt-
ended DNA molecules, as recited in Appellant's claim 18.
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Nonetheless, as the Examiner found, Mueller discloses a process of
repairing and amplifying DNA, using a blend of enzymes that include a
DNA repair enzyme such as an AP endonuclease, a mesophilic polymerase, 8
and a thermophilic polymerase, such as the Taq polymerase, to effect
amplification. See Mueller, abstract; see also id. ,-i 53 ("[T]his invention
relates to an Enzyme Blend comprising a DNA polymerase and a means for
repairing an apurinic/apyrimidinic (AP) damage in DNA. Preferably, the
means for repairing an AP damage in DNA is an AP endonuclease DNA
repair enzyme."); id. ,-i,-i 100-101 (listing T4 DNA polymerase as suitable
mesophilic polymerase and Taq polymerase as suitable thermophilic
polymerase).
As the Examiner found, Mueller discloses that when using its enzyme
blend in a DNA repair/amplification process, the standard reaction
conditions include an initial incubation at 37° C for 30-60 minutes
("PREINCUBATION"), after which the reaction mixture is heated to 94° C
for 5 seconds ("INITIAL DENATURA TION"), then treated at 75° during
which time amplification primers are added to the reaction mix ("FOR AN
INACTIVATION STEP"), after which the DNA is subjected to 30
amplification cycles. Id. ,-i 144 (TABLE III).
As explained in Mueller, the initial preincubation step allows the
repair enzymes in the enzyme blend to act on the DNA in the sample. See
id. ,-i 55. As Mueller further explains, after the preincubation step, the DNA
in the sample is denatured, and the subsequent inactivation step involves
8 Mueller states that "[g]enerally, the mesophilic polymerase may have
polymerase activity at or below a temperature of about 70° C, ... and most
preferably between about room temperature and 50° C." Id. ,-i 100.
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heating the reaction mixture to a temperature that inactivates the DNA repair
enzymes, but which allows amplification by the thermostable polymerase.
See id. ,i 57.
As is evident, Mueller's DNA manipulations ultimately involve using
Taq polymerase to amplify the DNA, rather than adding a single-base
overhang, as performed in Marchuk and recited in Appellant's claim 18.
Nonetheless, we agree with the Examiner that, given its teachings, Mueller
would have advised a skilled artisan that, when performing a multi-step
DNA manipulation process that employs lower-temperature-active enzymes
to effect initial DNA modifications, followed by Taq polymerase in the final
step, it was useful to employ the Taq polymerase and the lower-temperature-
active enzymes in a single reaction mixture. See, e.g., Mueller, abstract; see
also id. ,i 53.
In particular, as the Examiner found, Mueller advised the skilled
artisan that, by using the Taq polymerase and the lower-temperature-active
enzymes in a single reaction mixture, the DNA manipulation could be
performed by the simple process of incubating the mixture at an initial
temperature that allows the lower-temperature-active enzymes to perform
their desired modifications, followed by raising the reaction mixture to a
temperature, for example 75° C, that allows the Taq polymerase to act on the
DNA, while concomitantly inactivating the enzymes that performed the
initial modification. See id. ,i,i 57, 144 (Table III).
As the Examiner found, the NEB T 4 Polymerase Manual discloses
that the T4 DNA polymerase used in Marchuk to produce the initial blunt-
ended DNA fragments may be inactivated by heating to 75° C for 20
minutes. NEB T4 Polymerase Manual, p. 1. And the NEB T4
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Polynucleotide Kinase Manual discloses that the T4 polynucleotide kinase
used in Quail's phosphorylation of the blunt-ended fragments is inactivated
by heating to 65° C for 20 minutes. NEB T4 Polynucleotide Kinase Manual,
p. 2.
Thus, on the current record, Mueller teaches that it was useful to
employ Taq polymerase and lower-temperature-active enzymes in a single
reaction mixture when performing multi-step DNA manipulations. And
Marchuk's blunting/tailing procedure, like Mueller's repair/amplification
procedure, employed a lower-temperature-active enzyme (T4 DNA
polymerase) to effect an initial DNA modification (blunting), followed by
using the Taq polymerase in the final step (to create the single-base
tail/overhang).
Given these teachings, we agree with the Examiner that a skilled
artisan performing Marchuk' s blunting/tailing procedure had a good reason
for, and a reasonable expectation of success in, preparing a single reaction
mixture containing the Taq polymerase as well as the lower-temperature-
active enzymes used in preparing blunt ends (T 4 DNA polymerase and T 4
polynucleotide kinase). Given the teachings in Mueller, moreover, the
skilled artisan would have recognized that it would be useful to perform
Marchuk' s blunting/tailing procedure by the simple process of incubating
the mixture at an initial temperature that allows the lower-temperature-active
enzymes to perform their desired modifications (blunting), followed by
raising the reaction mixture to a temperature, for example 75° C, that allows
the Taq polymerase to act on the DNA (to create the single-base
tail/overhang), while concomitantly inactivating the enzymes that performed
the initial modification. We, therefore, agree with the Examiner that the
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cited combination of references would have suggested a process having all
of the steps and features required by Appellant's claim 18.
We acknowledge, as Appellant contends (Appeal Br. 7), that it is not
entirely clear which specific enzymes are in the enzyme blend listed on
Table III (,-J 144) of Mueller. As discussed above, however, Marchuk and
Quail make it clear that enzymes useful for performing a blunting/tailing
procedure were known in the art, notwithstanding any deficiencies in
Mueller in that regard. And Appellant points to nothing unexpected coming
from that combination of known elements for their known purposes. See
KSR, 550 U.S. at 417 ("[W]hen a patent 'simply arranges old elements with
each performing the same function it had been known to perform' and yields
no more than one would expect from such an arrangement, the combination
is obvious.") (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273 (1976)).
As also discussed above, moreover, a skilled artisan properly viewing
Mueller's teachings as whole would have understood from the reference
that, when performing a multi-step DNA manipulation process using lower-
temperature-active enzymes to effect initial DNA modifications, followed by
Taq polymerase in the final step, it was useful to employ the Taq polymerase
and the lower-temperature-active enzymes in a single reaction mixture. See,
e.g., Mueller, abstract; see also id. ,-i 53.
Further, as also discussed above, the blunting/tailing procedure of
Marchuk employs a lower-temperature-active enzyme to effect an initial
DNA modification, followed by Taq polymerase in the final DNA
manipulating step, quite like the processes described in Mueller. Viewing
the teachings of Marchuk and Mueller in combination, therefore, a skilled
artisan performing Marchuk's blunting/tailing process had good reason for,
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and a reasonable expectation of success in, using a single reaction mixture
containing all of the enzymes required to perform the blunting/tailing
modifications, and to perform that procedure at an initial temperature
allowing the lower-temperature-active enzymes to first perform the blunting
modification, followed by raising the reaction mixture to a temperature that
inactivates the blunting enzymes while concomitantly allowing the Taq
polymerase to create the single-base tail/overhang.
Appellant contends that, because the 94° C denaturing step specified
in Table III of Mueller would denature the fragments being blunted/tailed,
Mueller would not have motivated a skilled artisan to perform Marchuk's
blunting/tailing process using a single reaction mixture. See Appeal Br. 7-8.
In response, the Examiner contends that a skilled artisan would have
recognized that the denaturing step was necessary for Mueller's
amplification procedure, whereas denaturation "is not [necessary] for the
blunting and tailing as neither Marchuk and Quail disclose ( an intervening)
denaturation in blunting and/or tailing and thus, the ordinary artisan would
not have been motivated to include a denaturation or an intervening
denaturation." Ans. 22.
We find that the Examiner has the better position. Appellant does not
dispute, nor do we discern error in, the Examiner's finding that Marchuk' s
blunting/tailing process does not involve a denaturing step. See Marchuk
generally. Nor does Appellant dispute the Examiner's finding that the
denaturing step listed in Table III of Mueller was necessary for performing
Mueller's amplification procedure.
Because a skilled artisan undisputedly would have recognized that the
denaturing step listed on Table III of Mueller was not necessary to
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Marchuk's blunting/tailing procedure, we agree with the Examiner that a
skilled artisan had a good reason for, and a reasonable expectation of success
in, performing Marchuk's blunting/tailing procedure with a single reaction
mixture containing all necessary enzymes without a denaturing step. See
KSR, 550 U.S. at 421 ("A person of ordinary skill is ... a person of ordinary
creativity, not an automaton.").
Indeed, assuming Appellant is correct in contending that a skilled
artisan would have recognized Mueller's denaturing step as being
incompatible with Marchuk' s blunting/tailing process (see Appeal Br. 8),
such an artisan using a single multi-enzyme reaction mixture to perform
Marchuk' s blunting/tailing reaction would not have included the denaturing
step in that process. Thus, although it might have been unobvious to
eliminate the DNA denaturing step from Mueller's amplification process
(see Reply Br. 2-4), it is undisputed on this record that Marchuk's
blunting/tailing procedure does not involve DNA denaturation. We,
therefore, discern no error in the Examiner's finding that when performing
Marchuk's blunting/tailing procedure with a single reaction mixture, a
skilled artisan had a good reason for not performing a DNA denaturing step.
Nor are we persuaded that Mueller's disclosure of a denaturing step would
deter a skilled artisan from applying Mueller's teachings to Marchuk' s
process.
We are also unpersuaded by Appellant's contention that a skilled
artisan would have been led away from claim 18' s step of raising the
reaction mixture to at least 60°C to inactivate the T4 DNA polymerase and
permit the Taq polymerase to add a single base overhang to the blunt-ended
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fragments. See Appeal Br. 8-11 ( citing Declaration of William Jack under
37 C.F.R. § 1.132 (signed July 1, 2016; "Jack Deel.")).
We acknowledge that, in the protocol for generating blunt ends, the
Invitrogen Manual9 states as follows: "Terminate reaction by phenol
extraction, chloroform extraction, and ethanol precipitation. Heat
inactivation is not recommended, as heat inactivation may cause ends to
'breathe' and be more susceptible to 3' to 5' exonuclease activity."
Invitrogen Manual, p. 2.
We acknowledge also Dr. William Jack's testimony, consistent with
the Invitrogen Manual, that excessive heat-induced "breathing" can result in
degradation of the blunted ends created by the T4 DNA polymerase, because
that enzyme has a potent 3' to 5' exonuclease activity. Jack Deel. ,-J 8.
We also acknowledge the statement in the NEB T4 DNA Polymerase
Manual that, to stop the blunting reaction, elevated temperatures should be
avoided:
Stop reaction by adding EDT A to a final concentration of 10
mM and heating to 75°C for 20 minutes. CAUTION: Elevated
temperatures, excessive amounts of enzyme, failure to
supplement with dNTPs or long reaction times will result in
recessed ends due to the 3' ~ 5' exonuclease activity of the
enzyme.
NEB T4 DNA Polymerase Manual, p. 2 (reference citations omitted).
As is evident, however, while the NEB T4 DNA Polymerase Manual
states that elevated temperatures should be avoided, the sentence
immediately preceding that statement states expressly that the blunting
reaction is stopped by a step that includes heating the reaction mixture to
9 Invitrogen T4 DNA Polymerase Manual (2003), Exhibit A attached to the
Jack Declaration.
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75° C for 20 minutes. Because the NEB T4 DNA Polymerase Manual's
caution against elevated temperatures is presented directly side-by-side with
its express direction to stop the blunting reaction by heating to 75° C, we are
not persuaded that the NEB T4 DNA Polymerase Manual would have led a
skilled artisan away from inactivating the T 4 DNA polymerase by heating to
75° C.
Given the NEB T4 DNA Polymerase Manual's express direction to
stop the blunting reaction by heating to 75° C, moreover, we are also not
persuaded that the Invitrogen Manual, or the skilled artisan's knowledge of
heat-induced "breathing" of DNA fragments, would have led the skilled
artisan away from inactivating the T4 DNA polymerase by heating to 75° C.
At best, in light of the evidence advanced by Appellant, it might be true that
a skilled artisan would have avoided temperatures higher than 75° C. We
are not persuaded, however, that the evidence of record supports Appellant's
contention that a skilled artisan would have been led away from
representative claim 18' s step of inactivating the T 4 DNA polymerase by
incubating to at least 60° C for at least 5 minutes, given the express direction
in the NEB T4 DNA Polymerase Manual to stop the blunting reaction by
heating to 75° C for 20 minutes.
We are also unpersuaded by Appellant's contention that the reagents
used to stop the blunting reaction in the Invitrogen Manual
(phenol/chloroform), as well as in the NEB T4 DNA Polymerase Manual
(EDTA), would have led away from claim 18's heat inactivation step, or
would have led away from applying Mueller's teachings to Marchuk' s
process. See Appeal Br. 11.
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We acknowledge, as noted above, that the Invitrogen Manual
discloses using phenol, chloroform, and ethanol to stop the blunting reaction,
and the NEB T4 DNA Polymerase Manual discloses using EDTA, in
addition to heating to 75° C. As the Examiner pointed out, however (see
Ans. 5), the NEB T4 DNA Polymerase Manual states expressly that T4
DNA polymerase is inactivated by heating to 75° C for 20 minutes. See
NEB T4 DNA Polymerase Manual, p. 1. ("Heat Inactivation: 75°C for 20
minutes.").
Thus, although phenol, chloroform, and ethanol were known in the art
to inhibit the action of the T4 DNA polymerase blunting enzyme (see
Appeal Br. 11 ), a skilled artisan would have recognized from the NEB T4
DNA Polymerase Manual that the blunting step could also be stopped by
simply heating the reaction mixture. We are, therefore, not persuaded that a
skilled artisan performing Marchuk' s blunting/tailing procedure would have
been led away from Mueller's single-pot process that used heat to inactivate
the enzymes used in the initial DNA modifications.
We are also unpersuaded that arriving at the process recited in
representative claim 18 involved mental leaps that demonstrate the
unobviousness of the claimed process. See Appeal Br. 11-12.
As discussed above, claim 18 recites a process for performing a DNA
fragment blunting/tailing process using enzymes that were known in the art
to be useful for that purpose. See Marchuk, Quail. Although Marchuk and
Quail performed the blunting/tailing in separate reactions, it was known in
the art that it was advantageous to use a single reaction mixture in processes
involving multiple manipulations of DNA, and to perform the reaction at an
initial lower temperature enabling initial DNA modifications by lower-
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temperature-active enzymes, followed by raising the temperature to allow
the Taq polymerase to act on the modified DNA. See Mueller.
As to Appellant's contention that the claimed enzymes were not
known to be compatible (Appeal Br. 12), Quail discloses that the blunting
enzymes recited in claim 18 were used together in the blunting step (see
Quail 18.2.7 (using a combination of T4 DNA polymerase and T4
polynucleotide kinase in blunt-end preparation)). And as discussed above,
Mueller discloses T4 DNA polymerase as a suitable mesophilic polymerase
and Taq polymerase as a suitable thermophilic polymerase for inclusion in
its enzyme blend. Mueller ,-J,-J 100-101. Appellant does not persuade us,
therefore, that a skilled artisan lacked a reasonable expectation of success in
combining the enzymes recited in claim 18, to form a single reaction mixture
for performing a blunting/tailing reaction.
In sum, for the reasons discussed, Appellant does not persuade us that
preponderant evidence does not support the Examiner's conclusion of
obviousness as to Appellant's claim 18. We, therefore, affirm the
Examiner's rejection of that claim. Claims 19-23, rejected over the same
combination of prior art references, fall with claim 18.
In rejecting claims 24 and 25 for obviousness, the Examiner cited
Marchuk, Mueller, the NEB T4 Polymerase Manual, Quail, and the NEB T4
Polynucleotide Kinase Manual for the teachings discussed above, and cited
the Illumina Genome Analyzer reference as evidence that the additional
features recited in dependent claims 24 and 25 would have been obvious
variations of the process suggested by the other references. See Ans. 9-11.
Appellant does not present substantive argument specifically
traversing the combination of references cited against claims 24 and 25.
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Because Appellant therefore does not identify, nor do we discern, error in
the Examiner's rejection of claims 24 and 25, we also affirm that rejection.
SUMMARY
For the reasons discussed, we affirm both of the Examiner's
obviousness rejections.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a)(l )(iv).
AFFIRMED
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