Appeal No. 09/959,009 Page 4
Application No. 08/958,009
sequences commonly found in different ethnic groups. The examiner rejected
claim 9, together with claims 3-6, 8, and 10-12, as obvious in view of Shriver,
Batzer, and Yamamoto.
The examiner characterized Shriver as teaching a method of estimating
ethnic affiliation based on DNA variations, using “allelic sequences present in
microsatellite repeat sequences or RFLP sequences.” Examiner’s Answer, page
4. He cited Batzer as teaching a similar process for estimating ethnic affiliation
based on DNA sequences, using “allelic sequences present in an Alu repeat
sequence.” Id.
The examiner acknowledged that the methods disclosed by Shriver and
Batzer did not use the Alu U or Alu D sequences, but he noted Yamamoto
“teaches the Alu U and Alu D sequences.” He concluded that
[i]t would have been prima facie obvious to one having ordinary skill
in the art at the time the invention was made to combine the ethnic
affiliation methods of Shriver et al[.] in view of Batzer et al [.] with
the use of the Alu sequence as taught by Yamamoto.
Id., page 6. The examiner found that a skilled artisan would have been
motivated to combine the cited references because Yamamoto’s Alu sequences
are “structurally and functionally alternative” to both the other Alu sequences
used by Batzer and the microsatellite repeats used by Shriver. See id.
Appellants argue that the examiner’s rejection is based on impermissible
hindsight. See the Appeal Brief, page 14:
Shriver [and] Batzer could not have used the present invention
without knowledge of the polymorphisms of the 950 bp LDL[R]
sequence that contains Alu U and Alu D. For Shriver to combine
his method with the observation of Yamamoto would require that he
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