Appeal No. 1996-2009
Application No. 07/982,193
Answer, p.4), the examiner relies on Izban for its
disclosure of a known cell-specific promoter. Based on
this evidence, the examiner concludes that
It would have been obvious to include a cell-
specific vector, such as the one taught by Izban, in
an AAV expression vector, such as those taught by
Lebkowski, in order to achieve expression of a gene
only in those cells in which its expression is
desired.
Examiner's Answer, p. 5.
Although the examiner concludes, based on the art
combination, that it would have been obvious to "include"
the Izban promoter in Lebkowski's AAV expression vector,
and thereby achieve the claimed invention, how this
inclusion is to be accomplished is not explained. We
consider two scenarios reflected in the arguments of the
parties: 1) the Izban promoter is incorporated along with
p40 in Lebkowski's AAV expression vector, and 2) the
Izban promoter is substituted for p40 in Lebkowski's AAV
expression vector. Either way we are not persuaded that
the examiner has made out a prima facie case of
obviousness for the claimed expression vector.
Under the first scenario, even if we were to find
that the combination of Lebkowski and Izban would have
suggested to those of ordinary skill in the art that they
should make the claimed expression vector by including
both the p40 and an Izban promoter in the AAV expression
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