Appeal No. 1998-1719
Application No. 08/442,603
The concurrence believes that the examiner has met her burden because
“[a]ppellants have admitted that the modification they made to the pGB20 translation
start site was known in the art to optimize expression in mammalian cells.” The
concurring opinion refers to a passage of appellants’ specification (page 18) finding
that “[t]his passage is an admission that a consensus translation start site had been
disclosed in the prior art and that such a translation start site was known to provide
optimal translation in mammalian cells.” In support of this opinion, the concurrence
relies upon In re Nomiya, 509 F.2d 566, 570-71, 184 USPQ 607, 611 (CCPA 1975)
for the proposition that “[i]nformation that an applicant admits is in the prior art ‘may
be considered ‘prior art’ for any purpose, including use as evidence of
obviousness.’” The concurrence also relies on, In re Hedges, 783 F.2d 1038, 1039,
228 USPQ 685, 687 (Fed. Cir. 1986) for the proposition that “the prior art as a
whole must be considered [and] … the teachings are to be viewed as they would
have been viewed by one of ordinary skill.” We disagree with this line of reasoning.
We first note that our concurring colleague’s reasoning bears little
relationship to the reasoning presented to us on the record by the examiner.
Nevertheless, assuming arguendo that appellants’ statements at page 18 of the
specification constitute admitted prior art5, we find no reason, suggestion or
motivation stemming from the prior art to modify Martin, in the manner proposed by
the examiner. Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568,
1573, 37 USPQ2d 1626, 1629 (Fed. Cir. 1996). In our judgment, the only reason or
5 We do not find it necessary to determine if, or to what extent, the statements at
page 18 of the specification constitute admitted prior art.
5
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