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