Appeal No. 95-0420
Application 07/959,509
the supplemental Reply Brief, and the Examiner's Answer and supplemental Answer, we
reverse the examiner's rejection under 35 USC § 103.
DISCUSSION
First, in presenting their case before the Board, Appellants group and argue claim
17 separately. See the main Brief, pages 3, 12 and 13. The examiner, however, does not
focus separately on claim 17. The examiner does not explain how or why a person having
ordinary skill in the art, armed with disclosures of Selden and Tsang, would have arrived at
the plasmid defined in this claim. Therefore, the examiner has not established a prima
facie case of unpatentability of clam 17, and the rejection of this claim on prior art grounds
is reversed.
Second, in claims 1 through 16, Appellants recite a human cell line which has been
stably transformed by a recombinant vector. Manifestly, the combined disclosures of
Selden and Tsang are insufficient to support a conclusion of obviousness of claims
containing that limitation. As acknowledged by the examiner in the supplemental Answer,
page 2, second paragraph, "[t]he rejection does not supply a reference teaching stably
transfected cells". (emphasis added). Where, as here, the combined disclosures of
Selden and Tsang do not reach the claimed subject matter as a whole,
including the requirement of a human cell line that has been stably transformed by a
3
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007