Appeal No. 1995-1993
Application 07/661,370
Answer, para. bridging pp. 10-11.
We find both theories unpersuasive.
Here, we find that the examiner has overlooked the fact that the appropriate legal
standard for determining obviousness is whether the applied prior art would have
suggested the claimed invention to one of ordinary skill in the art. With respect to Theory I,
in our review of the Talbott and Pedersen references, the only two references cited in the
rejection which are directed to FIV, we do not find any teaching or suggestion of the FIV
0.4 envelope protein or a DNA sequence which encodes said protein. Nor do we find any
teaching in Kieny, and none has been pointed out by the examiner, that the HIV gp40
peptide is equivalent to the FIV 0.4 envelope protein. As to Theory II and the examiner’s
attempt to relate the teachings of Starcich and Talbott to each other, we find that Starcich
compares different human variants with one another, but that the reference is silent with
respect to the relationship between FIV and HIV. We find that Talbott, on the other hand,
appears to contradict each of the examiner’s theories. That is, Figure 4 of Talbott
suggests that HIV and FIV are phylogenically distinct. Talbott, p. 5746. Thus, in our view,
Talbott suggests that one of ordinary skill in the art would not have expected to find that the
envelope proteins of HIV and FIV are “strikingly similar.”
In fact, overall, we find that the evidence of record overwhelmingly supports a
conclusion which is contrary to the examiner’s unsupported allegation that “mere visual
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