Appeal No. 2001-2500
Application No. 08/590,729
Appeal Brief, page 6. Appellants assert that this modified initiator tRNA gives as
efficient initiation as the natural fMet-tRNAf. Id.
This argument is not persuasive. First, claim 1 reads on a method of
producing fluorescently labeled proteins using any labeled aminoacyl tRNA, not
just a labeled initiator tRNA. Thus, the fact that Picking’s initiator tRNA would not
initiate transcription of a naturally occurring mRNA is irrelevant, since Picking
also teaches labeled elongator tRNAs (lysyl-tRNA and alanyl-tRNA) which would
be expected to function in the claimed method to produce a fluorescently labeled
product. In addition, to the extent that Appellants are relying on the asserted
efficiency of their labeled initiator tRNA to show unexpected results, “it is well
settled that unexpected results must be established by factual evidence.” In re
Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997).
Appellants have provided no objective evidence to support the asserted
efficiency.
Finally, Appellants argue that the references relied on by the examiner do
not provide the required “teaching, suggestion, or incentive” to combine their
respective teachings, nor do they provide a reasonable expectation of success.
Appeal Brief, page 7. Appellants do not elaborate on why they believe the cited
references are deficient in providing motivation to combine or an expectation of
success.
These arguments are not persuasive. For the reasons discussed above,
we disagree with Appellants’ position. Specifically, Kudlicki states that an
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