Appeal No. 2003-0892 Page 7
Application No. 09/454,385
molecule, as well as fluorescently labeled DNA” (page 3184), opening the way “to
develop fluorescence immunoassay, hybridization, and DNA fingerprinting techniques
that do not require extensive DNA amplification using the polymerase chain reaction [ ]
or other methods” (page 3186). Nor are we persuaded that the present invention
excludes the use of Conrad’s “inherently fluorescent nucleosides” in the present
fluorophore-labeled target/reporter molecules, as appellant argues (Brief, page 5).
Nevertheless, the examiner’s description of Conrad’s teachings notwithstanding,
appellant asserts that Conrad does not “extend[ ] a primer sequence along a target
molecule after the primer has first been hybridized to a target sequence to form an
extended hybridized reporter molecule with incorporated [n]ucleotides labeled with a
fluorophore” (Brief, page 6), and thus, “does not teach a process for forming a reporter
molecule directly on a target molecule” (id.), as specifically required by the claims on
appeal. The examiner has not responded to appellant’s assertion in any way.
Moreover, having reviewed Conrad, especially those portions particularly relied on by
the examiner, we are hard pressed to find anything that corresponds to the examiner’s
description, and it appears to us that appellant’s assertion is well founded.
The initial burden of presenting a prima facie case of obviousness rests on the
examiner. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). Moreover, findings of fact underlying an obviousness rejection, as well as
conclusions of law, must be made in accordance with the Administrative Procedure Act,
5 U.S.C. 706 (A),(E) (1994), see Zurko v. Dickinson, 527 U.S. 150, 158, 119 S.Ct.
1816, 1821, 50 USPQ2d 1930, 1934 (1999), and must be supported by substantial
evidence within the record. See In re Gartside, 203 F.3d 1305, 1315, 53 USPQ2d
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