Appeal No. 1996-2009
Application No. 07/982,193
purposes3 and how these problems are overcome by
incorporating a cell-specific promoter instead.4
Nevertheless, one cannot rely on appellant's disclosure
to support a case of obviousness. "Obviousness can not
be established by hindsight combination to produce the
claimed invention," In re Dance, 160 F.3d 1339, 1343, 48
USPQ2d 1635, 1637 (Fed. Cir. 1998).
Not only is there no reasonable expectation of
success that the substitution examiner argues would
achieve the claimed result, but there is no suggestion in
the cited prior art to making that substitution.
Accordingly, examiner has not established a prima facie
case of obviousness under the second scenario.
Since the examiner has not met the burden of
establishing a prima facie case of obviousness under
either the first or second scenario, the rejections under
35 U.S.C. ' 103 are reversed.
3 "While AAV-based vectors allow stable, site-
specific integration of the transferred gene, the
indiscriminate expression of the transferred gene in all
cell lineages presents significant problems. Thus, a
need exists for AAV vectors which effect tissue-specific
expression of the transferred gene." Specification, p.
5.
4 "The vectors of the present invention contain a
promoter which directs tissue-specific expression. For
example, the wild-type parvovirus B19 has a limited host
range and exhibits a remarkable tissue tropism for the
rythroid elements of bone marrow" Specification, p. 12.
12
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