Appeal No. 2001-2500
Application No. 08/590,729
system for coupled transcription/translation of exogenously added genes.”
Abstract. Kudlicki’s disclosed method meets every limitation of the claimed
method except for the inclusion of a fluorescently labeled aminoacyl tRNA.
Instead, Kudlicki used an aminoacyl tRNA labeled with 14C-leucine to produce
radioactively labeled protein. See page 390, paragraph bridging the columns
(“The system used to carry out coupled transcription/translation contained . . . 83
µM 14C-leucine, 200 µM of each of the other 19 amino acids, 20 µg E. coli tRNA,
. . . 1.2 A260 units of the ribosome fraction;” i.e., the system apparently relies on
enzymes in the ribosome fraction to couple the amino acids to the tRNA.).
In addition, Kudlicki expressly suggests modifying the disclosed cell-free
synthesis system to produce fluorescently labeled proteins. See page 393, right-
hand column: “Another advantage of an efficient in vitro protein-synthesizing
system is that tRNAs with modified amino acids (for example, amino acids with
covalently attached fluorophores) can be incorporated into nascent peptide
chains.” Thus, Kudlicki might be viewed as an anticipatory disclosure, in that the
fluorescent-label embodiment is expressly disclosed as an alternative to the
exemplified radioactive-label embodiment. See Bristol-Myers Squibb Co. v. Ben
Venue Labs., Inc., 246 F.3d 1368, 1379, 58 USPQ2d 1508, (Fed. Cir. 2001)
(“[A]nticipation does not require actual performance of suggestions in a
disclosure. Rather, anticipation only requires that those suggestions be enabling
to one of skill in the art.”); In re Donohue, 766 F.2d 531, 533, 226 USPQ 619,
621 (Fed. Cir. 1985) (“It is not, however, necessary that an invention disclosed in
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