Ex parte PAVLAKIS et al. - Page 11

              Appeal No. 1995-2723                                                                                            
              Application 07/858,747                                                                                          

              region was present in the coding region of p17 .  We note page 154, column 2, lines 21-                         
              23 which indicates that the expression of the plasmid pTRG(481-631) "expressed high                             
              levels of mRNA both in the absence and in the presence of Rev. . ."  Thus the reference                         
              describes at least one mutated p17  gene which results in mRNA which was Rev                                    
              independent as compared to similar plasmids which were Rev dependent.  Thus, Schwartz                           
              describes the process as it relates to the GAG protein of a Rev-dependent complex                               
              retrovirus as claimed.                                                                                          
                      Appellants also urge that the invention must be considered as a whole and that                          
              even if the individual steps were taught, the multi-step method and the elements used are                       
              unobvious.   However, this is not the situation here.  The prior art relied upon by the                         
              examiner is not merely a collection of the individual steps or elements.  Schwartz teaches                      
              all aspects of the invention as claimed except for the use of a mutagenesis process                             
              involving multiple point mutations.  Yet as we concluded above,                                                 
              the substitution of this mutagenesis technique for the deletion technique used by Schwartz                      
              would have been obvious to those skilled in this art based on the disclosure of the                             
              references cited by the examiner.   For the same reasons, we do not agree that the                              
              examiner has improperly made use of hindsight construction of the invention.                                    
                      Having carefully weighed the evidence in favor of patentability against the evidence                    
              against patentability, we conclude that the examiner has established a prima facie case of                      
              unpatentability of the claimed subject method which appellants have not overcome by                             


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