Appeal No. 1999-2814
Application No. 08/990,539
The examiner argues that
[a]n ordinary practitioner would have been motivated 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 . . . in the above quotation 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 “The osmium complex
described in this report has the favorable property of a long
absorption wavelen[g]th and high anisotropy. . . . An ordinary
practitioner would have been motivated to substitute the Osmium
label of Terpetschnig into the DNA sequencing method of Zhang in
view of Bannwarth . . . for the advantage of a long absorption
wavelength and high anisotropy.
Examiner’s Answer, pages 6-7.
We agree with Appellants that the cited references would not have
suggested the methods of the instant claims to a person of ordinary skill in the
art. The examiner argues that a skilled artisan would have been motivated to
combine Bannwarth’s fluorescent metal-ligand label with Zhang’s sequencing
method based on Bannwarth’s statement that the disclosed labels “seem to be
ideal nonisotopic labels in those sequencing procedures which operate with just
one single fluorescent primer.” Zhang’s sequencing method, however, does not
operate with just one single fluorescent primer. The method described by Zhang
employs four primers, each labeled with a different fluorescent label. See the
abstract (“Four-color DNA cycle sequencing was performed.” (emphasis added)).
The exami ner provides no explanation of why a person of ordinary skill in the art
would combine a fluorescent label that is disclosed to be ideal for one type of
DNA sequencing process with a different DNA sequencing process.
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