Appeal No. 09/959,009 Page 6
Application No. 08/958,009
other 500,000 Alu sequences in the human genome, would have been useful in a
method for determining or estimating ethnic affiliation.
“[I]dentification in the prior art of each individual part claimed is insufficient
to defeat patentability of the whole claimed invention. Rather, to establish
obviousness based on a combination of the elements disclosed in the prior art,
there must be some motivation, suggestion or teaching of the desirability of
making the specific combination that was made by the applicant.” In re Kotzab,
217 F.3d 1365, 1369-70, 55 USPQ2d 1313, 1316 (Fed. Cir. 2000). That is, the
record must show 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.” In re Rouffet, 149 F.3d 1350, 1357, 47 USPQ2d 1453, 1458
(Fed. Cir. 1998).
Such evidence is lacking here. The examiner’s stated basis for combining
Yamamoto’s Alu U and Alu D elements with the methods of Shriver and Batzer is
that Alu U and Alu D are “structurally and functionally alternative” to the loci
analyzed by Shriver and Batzer. We take this to mean that those of skill in the
art would have recognized the equivalence of all Alu elements for use in a
method based on DNA variability. The examiner cites no evidence to support
this position, and in fact the evidence of record is to the contrary.
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