Appeal No. 2001-2500
Application No. 08/590,729
possible aminoacyl-tRNAs, fMet-tRNAf as the attachment site for a fluorescent
label. We do not find the required “reason, suggestion, or motivation” to do so in
the cited references. It is true that Hildenbrand’s fluorescent label was attached
predominantly if not exclusively at the N-terminal methionine. See the abstract.
However, Hildenbrand does not disclose that the label was deliberately localized
to the N-terminus. In fact, Hildenbrand speculates that the reason the internal
methionine was not also labeled is that it is buried within the folded protein. See
page 14524, left-hand colum n. In addition, Hildenbrand does not disclose that
limiting the location of the label to the N-terminus provides any advantages.
Therefore, Hildenbrand cannot be said to suggest the method of claims 2-4.
Nor do any of the other references provide the required suggestion.
Kudlicki contains no teaching regarding labeling the N-terminus of a synthesized
protein. Picking discloses a fluorescently labeled “synthetic initiator alanyl-tRNA”
for producing polyserine or polyalanine but does not disclose or suggest a
fluorescently labeled fMet-tRNAf, such as would be necessary to initiate
translation of a naturally occurring mRNA in Kudlicki’s protein synthesis system.
Stryer discusses the translation process generally but does not discuss labeling
of proteins.
Thus, the references relied on by the examiner fail to provide a reason,
suggestion, or motivation that would have led a person of ordinary skill in the art
to combine a fluorescently labeled initiator tRNA with a cell-free protein synthesis
system. We therefore conclude that the references do not support a prima facie
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