Appeal No. 1996-2009
Application No. 07/982,193
vector, to establish the prima facie case of obviousness,
the prior art would have to also reveal that, in so
including the promoter, those of ordinary skill would
have had a reasonable expectation of success in obtaining
an AAV vector with cell-specific gene expression. "Both
the suggestion and the reasonable expectation of success
must be founded in the prior art, not in the applicant's
disclosure." In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d
1438, 1442 (Fed. Cir. 1991).2 The burden rests on the
examiner to support the prima facie case of obviousness
with a showing that in combining the promoters there
would have been a reasonable expectation of success in
obtaining the claimed vector. Here that has not been
done.
Whether the combination of the p40 and an Izban
promoter in the AAV expression vector would yield "an
2 "Where claimed subject matter has been rejected as
obvious in view of a combination of prior art references,
a proper analysis under ' 103 requires, inter alia,
consideration of two factors: (1) whether the prior art
would have suggested to those of ordinary skill in the
art that they should make the claimed composition or
device, or carry out the claimed process; and (2) whether
the prior art would also have revealed that in so making
or carrying out, those of ordinary skill would have a
reasonable expectation of success. See In re Dow
Chemical Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531
(Fed. Cir. 1988). Both the suggestion and the reasonable
expectation of success must be founded in the prior art,
not in the applicant's disclosure. Id."
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