Appeal No. 1998-1719
Application No. 08/442,603
suggestion to modify the references, as suggested by the concurrence, to arrive at
the present invention comes from appellants’ specification. As our appellate
reviewing court noted in In re Shuman, 361 F.2d 1008, 1012, 150 USPQ 54, 57
(CCPA 1966) “[i]t is impermissible to first ascertain factually what appellants did
and then view the prior art in such a manner as to select from the random facts of
that art only those which may be modified and then utilized to reconstruct appellants’
invention from such prior art.”
On this record, the examiner acknowledges (Answer, page 7) that “the
disclosure of Martin et al. is unclear.” Then, after recognizing that the teachings in
the Martin reference were less than clear, the examiner states (Answer,
page 8):
Even if the gene fragments of Martin et al. differ from
appellants gene fragment as stated in the appeal brief, this is not an
unobvious difference. The disclosure of a gene clearly suggests to
the ordinary skilled artisan additional fragments of nucleic acid which
encode the same nucleotide sequence with less non-coding
sequence as, absent evidence to the contrary, the skilled artisan
would clearly consider all gene fragments which include the entire
coding sequence to be functionally equivalent for the expression of the
encoded protein. Furthermore, it was well known in the art to trim the
amount of untranslated sequences of a gene for optimization of the
expression of the encoded protein as such untranslated sequences
can include sequences which produce plasmid or message instability
or introduce elements such as upstream ATG codons which decrease
the amount of protein produced but are not necessary for expression
of the desired protein.
Initially, we believe that it is improper to base a rejection on a reference that
is less than clear. As stated in In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173,
178 (CCPA 1967), cert. denied, 389 U.S. 1057 (1968) “[t]he Patent Office has the
initial duty of supplying the factual basis for its rejection. It may not, because it may
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