Appeal No. 96-1027
Application 08/162,288
enablement for the subject matter claimed. Accordingly, we reverse the three enablement
rejections.
Obviousness
Claims 4, 17-19, and 21-24 are rejected under 35 U.S.C. § 103 as being
unpatentable over "either of van der Krol (Ph.D. thesis) or Jorgensen et al. taken with Hiatt
et al."
Appellants challenge the propriety of the rejection on two grounds. First, appellants
argue that they are entitled to the benefit of the filing date of the UK application (filed
November 11, 1986) and as a result of that priority, the Jorgensen and van der Krol
references are not references which can be properly applied against the claims. Second,
appellants argue that a prima facie case of obviousness has not been established. Since,
for the following reasons, we agree that a prima facie case of obviousness has not been
established, we find it unnecessary to reach a decision on whether the Jorgensen and van
der Krol references are proper prior art. For purposes of this appeal, we will assume
arguendo that the references constitute legally available prior art.
The examiner (Examiner's Answer, p. 7) states that van der Krol and Jorgensen use
"sense constructs to lower gene expression in plant cells." Appellants agree (Brief, p. 13).
In this respect, these references are analogous. Hiatt, on the other hand, uses antisense
constructs and therefore employs a wholly different process.
Jorgensen (column 3, lines 1-14), like the claimed method, discloses using partial
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