Appeal No. 09/959,009 Page 5
Application No. 08/958,009
blindly choose the Yamamoto sequence from among the 4 billion
alternative bases within the human genome. Likewise, Batzer
would have had to choose the Yamamoto sequence from among
the 500,000 Alu sequences found within the human genome. The
Yamamoto sequence was the first example of the sequence utilized
in the present invention; it is limited to the sequence from a single
individual, and thus without significance for any polymorphism at
the locus in question.
Appellants also argue that they have shown unexpectedly superior results
compared to the prior art. See the Appeal Brief, pages 12-13.
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial
burden of presenting a prima facie case of obviousness.” In re Rijckaert,
9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993). “[The Examiner]
can satisfy this burden only by showing some objective teaching in the prior art or
that knowledge generally available to one of ordinary skill in the art would lead
that individual to combine the relevant teachings of the references.” In re Fritch,
972 F.2d 1260, 1265, 23 USPQ2d 1780, 1783 (Fed. Cir. 1992).
We agree with Appellants that the examiner has not made out a prima
facie case of obviousness. The claims are directed to a method of estimating or
determining ethnic affiliation by measuring variability at two specific, discrete
genetic loci—Alu U and Alu D. The references cited by the examiner show that
methods were known in the art for estimating or determining ethnic affiliation by
analyzing genetic variability (Shriver and Batzer), and that the existence of the
Alu U and Alu D sequences was known (Yamamoto). However, there is nothing
disclosed in any of the relied-on references that would have suggested to those
of skill in the art that the Alu U and Alu D sequences, as opposed to any of the
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