Appeal No. 2001-1148 Page 7
Application No. 09/114,552
the claims. Combining Tartaglia and Kress would not lead one to the claimed
invention and, therefore, they are not a sufficient basis on which to establish a prima
facie case of obviousness for the claimed invention.
Examiner apparently agrees because examiner looks to Kitamoto for a
technique that, unlike the Kress technique, will produce a targeted rather than
random integration of the reporter gene in the mouse chromosome. Examiner
(Examiner’s Answer, p. 8) states that
because the site of chromosomal integration is random, a transgenic animal
according to the design of Kress may suffer the drawback of position effects on
gene expression from its promoter, or a deleterious mutation of a gene at the
site of insertion. Targeted integration, as taught by Kitamoto, avoids these
problems.
Accordingly, as best we can understand, examiner is taking the position that one of
ordinary skill in the art would look to Kress for the general concept of inserting a
reporter gene, notwithstanding its random integration, but then would look to
Kitamoto for the more advantageous technique of targeting the insertion of Kress’
reporter gene into the ob-containing mouse chromosome that Tartaglia discloses.
The difficulty with this position is that we are provided no evidence of the asserted
drawbacks to Kress’ technique. Examiner speculates that the Kress technique
“may suffer” drawbacks sufficient to warrant using the Kitamoto technique. Even if
these drawbacks to the Kress technique were well known, examiner does not
explain why one of ordinary skill would select the Kitamoto technique as the solution.
4 The reporter genes used by Kress are the luciferase gene for transfecting cells in vitro and the
lacZ gene for transgenic mice. The instant claims cover similar reporter genes; see especially
instant claim 13 which defines the reporter gene as being luciferase.
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