Appeal No. 95-2319
Application 07/812,880
Gorman, 933 F.2d 983, 986-987, 18 USPQ2d 1885, 1888 (Fed. Cir. 1991).
Here, the examiner has provided no evidence or facts which would suggest the use
of virally infected cells as taught by Stryer in the bioassay of Evans. We note the examiner's
statement at pages 6-7 of the Answer in support of the combination of the teaches of the two
references:
. . . because infection and transfection are considered equivalents in
gene transfer and because such an infection method was well established in
the art so as to be routine enough to give a reasonable expectation of
success.
We find this statement less than clear as to whether the examiner's position is that infection
and transfection would have been equivalent if used in a bioassay as herein claimed or
merely equivalent in gene transfer. Also, it is not clear from the record whether the
"reasonable expectation of success" refers to the ability of the two techniques to accomplish
gene transfer, or more relevant to the claims on appeal, suggest that one of ordinary skill in
this art would have a reasonable expectation of success in obtaining a mammalian cell
infected with a virus comprising DNA encoding a hormone response element operatively
linked to a DNA encoding reporter alone or with DNA encoding the functional receptor
protein which would be useful in the bioassay claimed. The examiner has failed to provide
any factual support or evidence which would have reasonably suggested, to one of ordinary
skill in this art, the use of the virally infected cells of Stryer in the bioassay process disclosed
by Evans other than the disclosure provided by the appellant. Where, as here, the examiner
fails to establish a
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