Appeal No. 1997-2515
Application No. 08/221,767
element that acts over a distance of at least 15 kb to stimulate high
level expression of the apoE gene in the liver.
The examiner explains (Answer, page 9) that SEQ ID NO:1 “is a 774
nucleotide sequence isolated from the 5,700 nucleotide sequence identified by
Simonet et al. as containing a liver specific enhancer element.” However,
appellants argue (Brief, page 4) that “the Simonet et al. reference does not teach or
suggest the HCR enhancer of SEQ ID NO:1, and this enhancer is an essential
element of the claimed invention.” Appellants argue (Brief, page 5) that:
[o]ne of ordinary skill in the art could be led to conclude that
somewhere along this 5700 nucleotide region of DNA there is a
subregion that contributes to ApoE gene expression in the liver. Such
conclusion might be an invitation to experiment, but an invitation to
experiment, or “obvious to try”, is not the standard for obviousness
under 35 USC § 103 ….
The examiner does not find this argument persuasive (Answer, page 10)
“because claim 1 recites ‘a nucleic acid sequence comprising the HCR enhancer of
SEQ ID NO:1’” [emphasis original]. The examiner reconfirms this construction of
the claim (Answer, page 16) in view of “the 5,700 nucleotide fragment disclosed by
Simonet et al. This fragment is a ‘nucleic acid sequence comprising the HCR
enhancer of SEQ ID NO: 1’ as claimed.”
However, the examiner’s interpretation of claim 1 is incorrect. According to the
examiner’s construction of the claim (Answer, page 10), the nucleic acid sequence
of claim 1 comprises one element; (1) an HCR enhancer of SEQ ID NO:1. On the
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