Appeal No. 1996-1093
Application No. 07/300,357
Delineating the precise nucleotide sequence for the mglB regions utilized by Muller would have been
obvious in view of the sequencing of the mglB initiation region and gene (including delineation of the
signal sequence) as taught by Scripture.” At page 5 of the Examiner’s Answer, the examiner states,
“[i]t would have been obvious to use the mglB gene of Muller or Scripture, with further routine
delineation of the promoter/operator region of the Scripture E.coli mglB gene.” The examiner
concludes, at page 5 of the Examiner’s Answer, last paragraph, that “[s]ince the vector and polylinker
were well known, it would have been obvious to construct the same vector to which the mglB
promoter/operator signal sequence and an operably linked gene of interest are added utilizing routine
cloning techniques.”
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the examiner to establish a
factual basis to support the legal conclusion of obviousness. In re Fine, 837 F.2d 1071, 1073,
5 USPQ2d 1596, 1598 (Fed. Cir. 1988). Moreover, 35 U.S.C. § 103 requires that the determination
of obviousness be made upon a comparison of the “subject matter sought to be patented” and “the
prior art.” See, In re Kratz, 592 F. 2d 1169, 201 USPQ 71, 76
(CCPA 1979 ). We find that the examiner did not establish a sufficient factual basis to support the
legal conclusion of obviousness.
The claimed invention is directed to an “[i]solated nucleic acid molecule consisting of the E. coli
or S. typhimurium mgl promoter/operator region up to, but not including the ATG codon which is the
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