Appeal No. 2001-1148 Page 5
Application No. 09/114,552
USPQ2d 1313, 1316 (Fed. Cir. 2000), the issue is whether there is “some
motivation, suggestion or teaching of the desirability of making the specific
combination that was made by the applicant,” id.
The statement of the rejection in the Examiner’s Answer is such that there is
no primary reference, although the greater part of examiner’s discussion relies on
Kress, Kitamoto, Sista and Tartaglia. In our view, Tartaglia is the closest prior art.
Only Tartaglia (Section. 5.2.4.2 Cell-Based Assays, cols. 30-31) discloses isolating
primary adipocyte cells from transgenic mice as claimed. Also as claimed, Tartaglia
introduces a transgene into the chromosome of the cell via gene targeting (col. 29,
lines 42-50), which can involve “homologous recombination with chromosomal
sequences” (col. 29, line 48). Furthermore, Tartaglia suggests that one way of
including the transgene would be to ligate the coding portion of the transgene
sequence “to a regulatory sequence which is capable of driving gene expression”
(col. 28, lines 61-65). This suggests to us that, like the claimed invention, expression
of the transgene sequence is under the control of gene expression regulatory
sequences of a native allele.
However, Tartaglia differs significantly from the claimed invention in
transfecting the adipocyte cells with “sequences capable of increasing or
decreasing the amount of target gene expression within the cell” (col. 31, lines 24-
27). Tartaglia does not show transfecting with a transgene comprising a sequence
encoding a reporter as claimed. Tartaglia discloses only target gene sequences
(col. 29, line 42) corresponding to those genes identified as being regulated by, for
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