Appeal No. 95-2319
Application 07/812,880
also affirm the rejection of these claims over the teachings of Evans and Stryer.
The appellants argue that a major advantage to using the claimed method is that the
recombinant virus has the “ability” or “capacity” to infect 100% of the target cells. Brief, pp.
7-8; Reply Brief, pp. 4-5. However, this argument does not address a limitation present in
the claims. Moreover, the appellants have not established that this “advantage” actually
occurs using the claimed method and that it would not have been expected by those of
ordinary skill in this art. For a showing of unexpected results to be probative evidence of
nonobviousness, the appellant must establish (i) that there is a difference between the
results obtained for the claimed method, and (ii) that the difference obtained is significant
and would not have been expected by a person having ordinary skill in the art at the time the
invention was made. In re Freeman, 474 F.2d 1318, 1324, 177 USPQ 139, 143 (CCPA
1973); In re D’Ancicco, 439 F.2d 1244, 1248, 169 USPQ 303, 306 (CCPA 1971).
I also agree with the examiner that in view of the teachings of Shackleford and Piccini
as to the use of mouse mammary tumor virus (MMTV) and vaccinia, respectively, to infect
mammalian cells and to express a heterologous gene therein, it would have been further
obvious to employ MMTV or vaccinia as the recombinant vector in the bioassay disclosed
by Evans. Accordingly, I would affirm the rejection of claims 4 and 5.
However, with respect to the rejections of claims 5-8 and 17-21 in view of Evans,
Stryer and Jones; and claims 10-13 in view of Evans, Stryer and Logan, I part company with
the examiner. I do not find that Jones and Logan teach or suggest the claimed limitations.
Thus, I find that the examiner has not met her burden of establishing a prima facie case of
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