Appeal No. 1998-1719
Application No. 08/442,603
GRIMES, Administrative Patent Judge, concurring.
Although I agree that the obviousness rejection should be reversed, I
respectfully disagree with the majority’s analysis of the prima facie case. The
majority concludes that the prima facie case fails because the examiner “fails to
identify a teaching, and we find no such teaching of record, that would suggest to a
person of ordinary skill in the art to modify the translation start site of the
glucocerebrosidase gene as was done in appellants’ pGB20 construct.” However,
Appellants 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 modification of the glucocerebrosidase translation start site in pGB20 is
explained in Appellants’ specification as follows:
To optimize expression of GCR in mammalian cells, we further
modified the GCR.D21 BglII cassette containing the gcr gene. In
general, with reference to Fig. 6, the modifications were made using
oligonucleotide directed mutagenesis . . . to alter the nucleotide
sequence near the GCR translation start to match the consensus
sequence (CCACCATGG) for optimal translation in mammalian cells
(as described by Kozak, 1986, 44 Cell 283-292).
Page 18. This 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.
Information that an applicant admits is in the prior art “may be considered
‘prior art’ for any purpose, including use as evidence of obviousness under
35 U.S.C. § 103.” In re Nomiya, 509 F.2d 566, 570-71, 184 USPQ 607, 611
(CCPA 1975). In addition, when considering obviousness, “the prior art as a whole
must be considered. The teachings are to be viewed as they would have been
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