Appeal No. 1999-1730
Application No. 08/478,205
Wood dissertation, page 221.
The examiner argues that “the passage points to a region of only 25
amino acids in length and suggests that this region will contain most of the amino
acids which affect the color of luminescence. . . . Thus the reference clearly
points to a specific region for the skilled artisan to go to produce further
modifications of the prior art luciferase genes.” Examiner’s Answer, pages 10-
11.
Appellants argue that the examiner has misinterpreted the relevant
paragraph. Appellants interpret the paragraph as meaning “that the three known
amino acid positions represent most of the potential sites where an amino acid
change would result in a different color, and that few other suitable sites would
be found.” Appeal Brief, page 11.
We believe Appellants’ interpretation is closer to how the passage would
have been read by those skilled in the art, at the time the invention was made.
The passage seems simply to summarize the experimental results disclosed and
discussed in the Wood dissertation, by noting that the three most important
positions for luciferase color (positions 223, 238, and 247) are located within 25
amino acids of each other. The passage notes that this is not likely to have
occurred by chance and that most of the amino acids that affect color are likely to
be in this area. That is, the reference to “many, if not most, of the potentially
suitable amino acids that affect the color of luminescence” would have been
understood to refer simply to the three positions that were disclosed in the
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