Appeal No. 1995-2723
Application 07/858,747
We find this combination of evidence sufficient to establish a case of prima facie
unpatentability of the claimed method.
Where, as here, a prima facie case of obviousness has been established, the
burden of going forward shifts to the appellants. In re Piasecki, 745 F.2d 1468, 1472, 223
USPQ 785, 788 (Fed. Cir. 1984), In re Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143,
147, (CCPA 1976).
In rebuttal, the appellants initially argue (Principal Brief, page 7) that:
Schwartz et al. do not teach or suggest using multiple point mutations to
increase stability. . . Schwartz et al. do not suggest, contemplate, or teach
the use of anything other than the Rev regulatory protein to reduce the effect
of the INS present in HIV-1 gag gene. There is no hint that would lead one
skilled in the art to know that multiple point mutations would reduce the
effects of INS.
While we agree that Schwartz does not teach the use of multiple point mutations in the
identification and study of INS regions in the HIV-1 gag gene, we do not read this
disclosure to indicate that the Rev regulatory protein is the only factor important in reducing
the effects of the INS region present in the gene. Schwartz described the effect of a series
of the deletion mutagenesis which evaluated the ability of the modified gene to express
stable mRNA both in the presence and absence of Rev. (Note, for example, page 154,
column 2, first full paragraph). With regard to the use of multiple point mutations, we agree
with he examiner that the combination of Wisdom and Kunkel, as discussed above, would
have reasonably suggested the substitution of multiple point mutations for the deletion
mutations used by Schwartz to determine whether a INS region was relevant to the stability
of the mRNA being studied.
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