Appeal No. 1999-2814
Application No. 08/990,539
“The osmium complex described in this report has the favorable
property of a long absorption wavelen[g]th and high anisotropy.”
Id., page 6.
Appellant argues that the examiner has not made out a prima facie case.
Appellant argues that Terpetschnig cannot properly be combined with the other
references because it is directed to labeling of antibodies and antigens for use in
an immunoassay, not labeling of DNA for DNA sequencing as in the claims.
Appeal Brief, pages 6-7. Appellant also argues that the prior art provides no
motivation to use the label disclosed by Terpetschnig in DNA sequencing
methods. Id., pages 8-9. Finally, Appellant argues that none of the cited
references suggest the invention of claims 1, 2, 10, 14, 16, 21, and 23-26, i.e.,
the multiple-probe, sequencing-by-hybridization method. Id., pages 9 -10.
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial
burden of presenting a prima facie case of obviousness. Only if that burden is
met, does the burden of coming forward with evidence or argument shift to the
applicant.” In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir.
1993). “In determining whether obviousness is established by combining the
teachings of the prior art, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.” In re
GPAC Inc., 57 F.3d 1573, 1581, 35 USPQ2d 1116, 1123 (1995) (internal
quotations omitted).
After reviewing the record, we agree with Appellant that the prior art does
not support a prima facie case of obviousness. Of the references cited by the
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