Appeal No. 1999-2814
Application No. 08/990,539
complexes for labeling in DNA sequencing, those skilled in the art would have
recognized the pertinence of Terpetschnig’s osmium-containing fluorescent
metal-ligand complexes for the same purpose. We therefore agree with the
examiner that Terpetschnig is analogous art.
Even though the cited references are analogous, however, “[t]here must
be some reason, suggestion, or motivation found in the prior art whereby a
person of ordinary skill in the field of the invention would make the combination.”
In re Oetiker, 977 F.2d 1443, 1447, 24 USPQ2d 1443, 1446 (Fed. Cir. 1992). An
adequate showing of motivation to combine requires “evidence that ‘a skilled
artisan, confronted with the same problems as the inventor and with no
knowledge of the claimed invention, would select the elements from the cited
prior art references for combination in the manner claimed.’” Ecolochem, Inc. v.
Southern Calif. Edison Co., 227 F.3d 1361, 1375, 56 USPQ2d 1065, 1075 (Fed.
Cir. 2000) (quoting In re Rouffet, 149 F.3d 1350, 1357, 47 USPQ2d 1453, 1456
(Fed. Cir. 1998)).
The examiner relies on Bannwarth’s statement that
these [bathophenanthroline Ru(II)] complexes can be measured in
a time-resolved mode after excitation by laser pulses with very high
sensitivity and due to the fact that they are very stable they seem to
be ideal nonisotopic labels in those sequencing procedures which
operate with just one single fluorescent primer. Nevertheless it
should be possible to synthesize analog complexes showing
different emission spectra and use them in those sequencing
procedures where four different dyes are necessary.
Bannwarth, page 218, left-hand column.
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