Appeal No. 1999-2814
Application No. 08/990,539
Finally, the examiner points to Terpetschnig’s disclosure that the osmium-
containing complex “has the favorable property of a long absorption wavelength
and a high anisotropy.” In view of this teaching, the examiner argues, “[a]n
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.” This
argument is also unpersuasive. Terpetschnig discloses an osmium-containing
fluorescent dye for use in immunoassays. While a long absorption wavelength
and high anisotropy are evidently desirable properties in that context, the record
contains no evidence that they are also desirable properties in a fluorescent label
for use in DNA sequencing. Thus, the evidence does not support the examiner’s
reliance on this statement to provide motivation to combine the cited references.
We conclude that the examiner’s rejection is not supported by an
adequate “reason, suggestion, or motivation” to combine the cited references.
“Combining prior art references without evidence of such a suggestion, teaching,
or motivation simply takes the inventor’s disclosure as a blueprint for piecing
together the prior art to defeat patentability—the essence of hindsight.” In re
Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999)
(citations omitted).
With respect to the sequencing-by-hybridization claims, Appellant argues
that “[a]ll of the sequencing references [relied on by the examiner] show the use
of a single primer. In contrast, [claims 1, 2, 10, 14, 16, 21, and 23-26] require the
use of two different oligonucleotides. . . . Clearly, that feature is absent from all
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