Appeal No. 1999-2814
Application No. 08/990,539
of the invention may be repeated to sequentially identify further bases of the
nucleotide strand, until the strand is completely sequenced.” Id., page 19.
The specification also discloses that fluorescent metal-ligand complexes
can be used as fluorescent labels in a dideoxy sequencing process. See pages
19-20 (Examples 1 and 2).
Discussion
The claims are directed to both the sequencing-by-hybridization method
(claims 1, 2, 10, 14, 16, 21, and 23-26) and an improvement in a standard
dideoxy sequencing method, the improvement being the use of a fluorescent
metal-ligand complex as a label (claims 27-33). Even though the claims are
directed to two distinctly different inventions, the examiner applied the same
obviousness rejection, based on the same set of references, to all the claims.
In essence, the examiner relied on Zhang as teaching a DNA sequencing
method, and relied on Bannwarth and Terpetschnig as teaching use of
fluorescent metal-ligand complexes in similar methods. See the Examiner’s
Answer, pages 4 -5.1 The examiner 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 substitute the
labels of Bannwarth into the method of Zhang since Bannworth [sic]
expressly notes that these labels are very sensitive, very stable and
may be ideal in some sequencing procedures. Bannwarth . . .
further motivates the synthesis of analog complexes. This
statement motivates the use of the alternative osmium metal ligand
complexes as taught by Terpetschnig since Terpetschnig states
1 The examiner cited Soper as “teach[ing] the use of fluorescence lifetime determinations in DNA
sequencing ladders in capillary gel electrophoresis.” Examiner’s Answer, page 5. Soper was
apparently cited to meet the limitation in claim 1 that the “detection utilizes measurement of
fluorescence lifetime.” However, as discussed infra, we conclude that this limitation is not critical
to the obviousness analysis. Therfore, we will not further discuss Soper.
5
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