Appeal No. 09/959,009 Page 8
Application No. 08/958,009
14 population groups.”).2 Shriver presents a set of twenty genetic loci that can
serve as “population-specific alleles” for ethnic-affiliation estimation of African-
Americans and a different set of twenty genetic loci for ethnic-affiliation
estimation of Hispanic-Americans. See Tables 1 and 2.
None of the references relied on by the examiner teaches or suggests that
the Alu U and Alu D elements differ in sequence between different ethnic groups.
The examiner has pointed to no evidence that those skilled in the art would have
been led to practice a method of predicting or determining ethnic affiliation by
analyzing differences in the sequences of the two specific genetic loci recited in
the claims, with a reasonable expectation of success.
We conclude that, while methods for genetically determining or predicting
ethnicity were known, and the existence of the Alu U and Alu D elements was
known, the prior art provides no suggestion or motivation to combine the method
with the Alu elements. “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). Since we conclude that the examiner has not made out a prima
facie case, we need not address Appellants’ rebuttal evidence.
2 Batzer refers to the Alu elements as “polymorphic,” but appears to use this phrase to refer to
variability in the presence/absence of a particular element within a population, rather than using it
to refer to differences in the sequence of the particular Alu element. See, e.g., page 24, right-
hand column (“Each Alu insertion was polymorphic in all of the populations except for the D1
repeat, which was not found within a small sample of Nigerians.”).
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