Appeal No. 2006-3006 Page 8
Application No. 10/123,713
Claim 5
Claim 5, which is dependent on claim 1, recites that the “labeling agent
comprises a fluorescent cyanine dye.” The Examiner asserts that Lizardi teaches
that cyanine dyes are “known in the art.” Answer 4. She argues that “[i]t would
have been obvious to one of ordinary skill in the art at the time the claimed
invention was made to apply the fluorescent dyes suggested by Lizardi et al to the
fluorescent labeling of Bobrow et al because one of ordinary skill in the art would
have expected the cyanine dye to function as desired.” Id.
Appellants argue that Lizardi “mentions cyanine dyes in the context of
incorporating cyanine dye-labeled UTP analogs into a nucleotide sequence during
rolling circle replication in RCA, or during transcription in RCT . . . . Thus, the
theoretical reference combination of Bobrow et al. with the cyanine dye labeled
UTP fails to afford a ‘labeling agent that comprises cyanine dye’ that is
‘immobilized upon said support member.’” Br. 7.
We do not find Appellants’ argument persuasive. An obviousness
determination under 35 U.S.C. § 103 requires consideration of “the scope and
contents of the prior art” in the context of the level of the person of ordinary skill
in the art. Graham v. John Deere Co., 383 U.S. 1, 13-14 (1966). Lizardi describes
a number of well-known detectable labels which can be used as labeling agents,
leaving the choice of the particular labeling reagent up to the person of ordinary
skill in the art. Based on this disclosure, we conclude that selection of the
particular labeling agent to utilize in Bobrow’s method is the type of choice a
skilled worker would have routinely made at the time the invention was made. The
rejection of claim 5 is affirmed.
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