Appeal No. 1999-2814
Application No. 08/990,539
references and consequently is not rendered obvious by the combination.”
Appeal Brief, pages 9-10.
We agree. The examiner argues that both Bannwarth and Zhang teach
this claim limitation, because “Bannwarth expressly shows the use of two
different primers on page 217, figure 1. . . . Separately, Zhang teaches the use
of primers in which each primer has a different label.” Examiner’s Answer, page
11. This argument is unpersuasive. Bannwarth’s Figure 1 indeed shows three
different primers, but the accompanying text makes clear that the primers are
shown merely to illustrate the synthesis of the final, ruthenium-labeled primer.
See page 217, right-hand column (citation omitted):
Primer 1 represents a 24 mer universal primer for M13 (18). In
primer 2, this universal primer was extended at the 5’-end by 5’-
amino-5’-deoxythymidine in order to generate specifically a primary
5’-amino group. A specific covalent coupling of the Ru
(bathophenanthroline) complex to this group via an amide bond
yielded primer 3.
The examiner has provided no explanation of how this disclosure would
have suggested a sequencing method such as that of instant claim 1, i.e., one in
which the sequence of a target DNA is determined based on the hybridization of
two or more probes which differ in sequence.
Zhang also fails to suggest this aspect of the claimed method. The
examiner argues that “Zhang teaches the use of primers in which each primer
has a different label,” Examiner’s Answer, page 11, but points to nothing in
Zhang that teaches or suggests primers or probes which differ in sequence, as
required by the instant claims. Therefore, the rejection of claims 1, 2, 10, 14, 16,
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