Appeal No. 1996-2009
Application No. 07/982,193
obviousness, in our view it supports appellant's position
that the result of replacing p40 with another promoter is
speculative and therefore there can be no reasonable
expectation of success. As with the first scenario, here
too examiner has not shown that there would have been a
reasonable expectation of success in obtaining the
claimed invention by incorporating the Izban promoter
between the ITRs of Lebkowski's AAV expression vector.
Lebkowski=s disclosure that "theoretically" all sequences
between the ITRs can be deleted or replaced indicates
that the results from manipulating this area of the AAV
expression vector are a matter of speculation. To then
also insert Izban's promoter in the deleted section only
adds to the speculative nature of the result. Absent
knowledge gained from appellant's specification, there is
no reasonable expectation of success in obtaining the
claimed expression vector from such a deletion/insertion.
We therefore agree with appellant:
Lebkowski et al. states that "theoretically, all
sequences between the two AAV inverted terminal
repeats can be deleted and replaced with endogenous
DNA" [appellant's emphasis]. Lebkowski et al.,
however, does not teach, or even suggest, that all
sequences between the two AAV terminal repeats can
be deleted and replaced by endogenous DNA to
construct a vector capable of site-specific
integration and cell-specific expression
[appellant's emphasis]. It is only with the benefit
of the present specification that the Examiner
establishes a nexus between the claimed invention
and the cited prior art teaching.
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