Appeal No. 1996-2009
Application No. 07/982,193
expression vector for site-specific integration and cell-
specific gene expression" as the claims require is
unclear. The examiner does not explained why one would
have expected the Izban promoter to predominate or
otherwise disregard Lebkowski's p40. Neither reference
involves combining promoters, and neither discusses the
consequences related to such a combination.
Consequently, based on the information in these
references, one can only speculate as to the result of
the combination. We agree with appellant's argument that
"in the absence of the requisite teaching of the present
invention there could not be a reasonable expectation
that the inclusion of a cell-specific promoter such as
that disclosed by Izban et al. in the vector of Lebkowski
et al. can achieve the present invention, especially
since the vectors of Lebkowski et al. contain a strong
promoter capable of overriding a cell-specific promoter
[appellant's emphasis]." Brief, sentence bridging pp. 5-
6. The examiner has therefore not established that,
based on the prior art disclosures, those of ordinary
skill would have had a reasonable expectation of success
in obtaining "an expression vector for site-specific
integration and cell-specific gene expression."
Accordingly, under this scenario, the examiner has not
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