Appeal No. 1995-1162
Application 07/725,943
Obviousness
The examiner has premised her conclusion of obviousness on the teachings of
Luck, Bagdasarian and Winnacker. The examiner argues that:
the references cited clearly teach that regulation of protein expression by an
inducible promoter is an old process. To the extent that specific limitations are not
taught, these limitations would have been obvious to one skilled in the art at the time
of applicants’ invention [Answer, p. 7].
It is well established that the examiner has the initial burden under § 103 to
establish a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445,
24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Piasecki, 745 F.2d 1468, 1471-72,
223 USPQ 785, 787-88 (Fed. Cir. 1984). To that end, the examiner must show that some
objective teaching or suggestion in the applied prior art, or knowledge generally available
in the art would have led one of ordinary skill in the art to lead combine the references to
arrive at the claimed invention. Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc., 75
F.3d 1568, 1573, 37 USPQ2d 1626, 1629 (Fed. Cir. 1996). Here, we do not find that the
examiner has even begun to provide reasons, based on the applied prior art or otherwise,
as to why it would have been obvious to one of ordinary skill in the art to limit the induction
of the inducible promoter in the manner required by the claims in order to produce greater
amounts of soluble protein in a transformed E. coli host cell. As developed in the
appellants’ brief, the references do not even allude to the solubility of the protein
expression products described therein. We remind the examiner that a conclusion of
7
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007