Appeal No. 1999-1774 Application No. 08/487,183 points to a specific region for the skilled artisan to go to produce further modifications of the prior art luciferases.” Examiner’s Answer, pages 9-10. 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 wo uld be found.” Appeal Brief, page 14. 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 dissertation to be important. Only with the benefit of hindsight can this passage be read to suggest mutating other amino acids in the 223-247 region. We therefore agree with Appellants that the cited references would not have motivated a person of ordinary skill in the art to alter the amino acid sequence of P. plagiophthalamus luciferase at the positions recited in claim 1. 7Page: Previous 1 2 3 4 5 6 7 8 9 NextLast modified: November 3, 2007