Appeal No. 1999-2814
Application No. 08/990,539
examiner, only Terpetschnig discloses a fluorescent metal-ligand complex
meeting the limitations of the instant claims.2 Thus, a prima facie case of
obviousness for any of the claims would require a person of ordinary skill in the
art to combine the osmium-containing fluorescent metal-ligand complex taught by
Terpetschnig with a DNA sequencing method such as that taught by Zhang or
Bannwarth.
We do not agree with Appellant’s argument that Terpetschnig is
nonanalogous art. “Two criteria have evolved for determining whether prior art is
analogous: (1) whether the art is from the same field of endeavor, regardless of
the problem addressed, and (2) if the reference is not within the field of the
inventor’s endeavor, whether the reference still is reasonably pertinent to the
particular problem with which the inventor is involved.” In re Clay, 966 F.2d 656,
658, 23 USPQ2d 1058, 1060 (Fed. Cir. 1992). The examiner argues that the
relevant field of endeavor is “clinical chemistry,” an assertion for which no
evidentiary support has been offered and with which Appellant disagrees.
We find it unnecessary to resolve this dispute, however, since
Terpetschnig clearly satisfies the second criterion for analogous art because it is
“reasonably pertinent to the particular problem” of fluorescent labels in DNA
sequencing. The pertinence of Terpetschnig is evidenced by Bannwarth, who
discloses the use of a fluorescent metal-ligand complex as a label in DNA
sequencing. In view of Bannwarth’s disclosure of ruthenium -containing
2 The claims either exclude ruthenium-containing complexes entirely (claims 1, 2, 10, 14, 16, 21,
23-26, and 32) or encompass only specific ruthenium-containing complexes not including the
bathophenanthroline complexes of Bannwarth (claims 27-31 and 33).
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