Ex parte SCHUMACHER et al. - Page 4




               Appeal No. 1996-1093                                                                                              
               Application No. 07/300,357                                                                                        
               Delineating the precise nucleotide sequence for the mglB regions utilized by Muller would have been               

               obvious in view of the sequencing of the mglB initiation region and gene (including delineation of the            

               signal sequence) as taught by Scripture.”  At page 5 of the Examiner’s Answer, the examiner states,               

               “[i]t would have been obvious to use the mglB gene of Muller or Scripture, with further routine                   

               delineation of the promoter/operator region of the Scripture E.coli mglB gene.”  The examiner                     

               concludes, at page 5 of the Examiner’s Answer, last paragraph, that “[s]ince the vector and polylinker            

               were well known, it would have been obvious to construct the same vector to which the mglB                        

               promoter/operator signal sequence and an operably linked gene of interest are added utilizing routine             

               cloning techniques.”                                                                                              

                      In rejecting claims under 35 U.S.C.  103, it is incumbent upon the examiner to establish a                

               factual basis to support the legal conclusion of obviousness.  In re Fine, 837 F.2d 1071, 1073,                   

               5 USPQ2d 1596, 1598 (Fed. Cir. 1988).  Moreover, 35 U.S.C.  103 requires that the determination                  

               of obviousness be made upon a comparison of the “subject matter sought to be patented” and “the                   

               prior art.”  See, In re Kratz, 592 F. 2d 1169,  201 USPQ 71, 76                                                   

               (CCPA 1979 ).  We find that the examiner did not establish a sufficient factual basis to support the              

               legal conclusion of obviousness.                                                                                  

                      The claimed invention is directed to an “[i]solated nucleic acid molecule consisting of the E. coli        

               or S. typhimurium mgl promoter/operator region up to, but not including the ATG codon which is the                


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