Appeal No. 94-2742
Application 07/792,600
OBVIOUSNESS
In relying upon Wong as evidence of obviousness, the examiner does not rely upon
the 5.8 kb mRNA discussed above in regard to the anticipation rejection of claim 1.
Rather, the examiner focusses upon the various cDNA fragments described in Wong. In
so doing, the examiner acknowledges at page 3 of the Examiner’s Answer that “Wong et
al. do not teach the native, correct nucleotide sequence nor a single cDNA encoding
human DNA polymerase alpha . . ..” The examiner relies upon Smith only for its disclosure
of methods for expressing a polypeptide. The examiner does not rely upon Smith to
acknowledge the efficiencies of Wong in regard to teaching “a single cDNA encoding
human DNA polymerase alpha.” The examiner’s conclusion of obviousness is stated at
page 3 of the Examiner’s Answer as follows:
It would have been prima facie obvious to one having ordinary skill in the art
at the time the invention was made to obtain a nucleic acid which correctly
encoded human DNA polymerase " (based on the teaching of Wong et al.),
and to clone said nucleic acid into a viral vector so that DNA polymerase "
would be expressed in a host cell (such as the baculovirus/ insect cell
expression system disclosed by Smith et [sic, al.]).
Conspicuous by its absence in the examiner’s statement of the rejection under 35
U.S.C. § 103 is any explanation as to why on the basis of the evidence of obviousness
relied upon, Wong and Smith, one of ordinary skill in the art would have arrived at what the
examiner acknowledges to be missing from this prior art, i.e., “a single cDNA encoding
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