Appeal No. 1996-1005
Application 07/947,982
wherein the second polynucleotide molecule is one which codes for a ribozyme. The
examiner's position began to fall apart when the claims were narrowed.
The examiner describes Jennings at page 4 of the examiner's answer as suggesting
“using the pol III promoters in tRNA molecules specifically to express any RNA-inhibiting
RNA.” The examiner amplifies this thought in the paragraph bridging pages 8-9 of the
answer where in responding to appellants' arguments the examiner states that “the
teachings of Jennings that a pol III promoter is useful to express an antisense RNA would
have suggested to the ordinary skilled artisan that it would have also been useful to express
another type of RNA-modifying RNA known in the art, i.e., a ribozyme.” However, the
examiner has not referred to any facts of record in support of these assertions.
In our view, the examiner has not properly established that one of ordinary skill in the
art would have read Jennings in this broad manner. Simply put, we find no factual support for
the examiner's assertion that one of ordinary skill in the art would have found it obvious to
modify the teachings of Jennings by using a polynucleotide sequence encoding a ribozyme
for one encoding antisense RNA. Conclusions of obviousness must be based upon facts, not
generalities. In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967), cert.
denied, 389 U.S. 1057 (1968); In re Freed, 425 F.2d 785, 788, 165 USPQ 570, 571 (CCPA
1970). Absent a fact-based explanation from the examiner, it appears that the only reason
for making such a substitution comes from appellants’ disclosure of the present invention, not
from Jennings or any of the additional references relied upon by the examiner. This is, of
course, improper hindsight.
Accordingly, all rejections must be reversed.
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