Appeal No. 1997-2515
Application No. 08/221,767
DISCUSSION
In reaching our decision in this appeal, we have given careful consideration
to the appellants’ specification and claims, and to the respective positions
articulated by the appellants and the examiner. We make reference to the
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examiner’s Answer for the examiner’s reasoning in support of the rejection. We
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further reference appellants’ Brief for the appellants’ arguments in favor of
patentability.
THE REJECTIONS UNDER 35 U.S.C. § 103:
The initial burden of presenting a prima facie case of obviousness rests on
the examiner. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed.
Cir. 1992). The examiner relies upon Simonet in each of the art rejections to teach
the claimed HCR enhancer. The examiner states (Answer, page 4) that “Simonet et
al. disclose DNA constructs comprising the same HCR sequence exemplified in the
instant application, operably linked to a promoter and a transgene (constructs
CI.361, CI.SE and CI.SC; p. 8652, col. 2 and Fig. 1).” Specifically, Simonet
teaches (page 8652, column 2):
[R]egulatory elements controlling expression of the apoC-I gene in the
liver, as well as the stomach, are located between 2.3 and 8.0 kb
downstream of the apoC-I gene, most likely between the apoC-I gene
and the apoC-I’ pseudogene. ... we propose that the downstream
region controlling hepatic apoC-I gene expression contains an
2Paper No. 24, mailed July 26, 1996.
2Paper No. 23, received May 21, 1996.
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