Appeal No. 2004-2139
Application No. 09/181,601
therein encode proteins and determine the biochemical function of said proteins.
Although Farber discloses this sequence of events for megabases of DNA sequences,
the same procedure is applied to the analysis of any unknown DNA sequence. That is,
simply isolating a DNA sequence is meaningless unless one skilled in the art can
determine (1) whether said DNA encodes a functional product; i.e., a protein; and
(2) the function of said protein. In any event, Farber discloses a method of analyzing
sequence information and predicting protein coding regions therein using logrithmic
methods. Since Farber demonstrates that one of ordinary skill in the art would routinely
parse polynucleotide sequence data to identify protein coding regions, we find it [the
publication] relates to the same problem as that addressed by the claimed invention.
Thus, we find the examiner’s use of Farber in the obviousness rejection to be
appropriate since the inventors would have been motivated to consider this reference
when making their invention. In re Clay, 966 F.2d 656, 659, 23 USPQ2d 1058, 1061
(Fed. Cir. 1992).
The appellants’ further arguments with respect to the examiner’s failure to
consider the invention as a whole, the examiner’s use of hindsight to combine the
references, and that there was no reasonable expectation of success, all focus on the
issue of whether it would have been obvious to identify polypeptide domains 50 to 300
amino acids in length. We have addressed this issue and, therefore, these arguments
above.
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