Appeal No. 2001-2500
Application No. 08/590,729
Appellants argue that the cited references do not support a prima facie
case of obviousness.2 Appeal Brief, pages 6-8. Specifically, Appellants argue
that “Kudlicki et al. discloses a bacterial cell free coupled transcription/translation
system but does not teach the synthesis of fluorescently labeled proteins.”
Appeal Brief, page 7. The premise of this argument is questionable since, as we
noted above, Kudlicki could well be viewed as teaching use of the disclosed
system to produce fluorescently labeled proteins, in view of the statement that
“tRNAs with modified amino acids (for example, amino acids with covalently
attached fluorophores) can be incorporated into nascent peptide chains” (page
393). Regardless, the present rejection is based on 35 U.S.C. § 103, and “[t]he
test for obviousness is what the combined teachings of the references would
have suggested to one of ordinary skill in the art.” In re Young, 927 F.2d 588,
591, 18 USPQ2d 1089, 1091 (Fed. Cir. 1991). See also In re Baird, 16 F.3d 380,
383, 29 USPQ2d 1550, 1552 (Fed. Cir. 1994) (“[A] reference must be considered
not only for what it expressly teaches, but also for what it fairly suggests.”).
Appellants also argue that
Picking et al. disclosed the use of a synthetic Ala -tRNA to initiate
synthesis of a homopolymer. . . . With this particular tRNA, one
cannot initiate protein synthesis at the AUG codon of naturally
occurring mRNAs. In contrast, the procedure described in the
present application uses a naturally occurring E. coli initiator tRNA
which is . . . modified to carry the coumarin residue on the a amino
group instead of the formyl group as in a “natural” initiation.
2 Appellants direct some of their arguments on Hildenbrand but, as just noted, Hildenbrand is not
necessary to the prima facie case with respect to claim 1. Therefore, Appellants’ arguments
based on Hildenbrand do not persuade us of any defect in the case of obviousness fully
supported by Kudlicki and Picking.
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