Final Rejection of Claims to cDNA Withdrawn After Filing Appeal Briefs
First Examiner finally rejected all pending claims because a few claims covered cDNA derived from a naturally occurring source (mRNA from a dog). The Examiner asserted that the cDNA as claimed was non-patentable subject matter based on Association for Molecular Pathology v. Myriad Genetics. The final rejection was appealed on grounds that the first Examiner identified no references and no authority that supports rejection of the pending cDNA claims. The first Examiner responded that Applicant had the burden of proof to show that the claimed cDNA did not exist in nature and Applicant failed to meet that burden.
After all briefs were submitted, the Patent Office appointed a second Examiner to continue prosecution and determine if Applicant was willing to make any amendments. Applicant agreed to consider amendments and received a request to clarify a few cDNA claims to assure that the claims did not cover the preexisting genomic DNA sequences. Applicant and the second Examiner then agreed to minor amendments that resulted in allowance.