Appeal No. 1997-2139
Application No. 08/114,595
2. Rejection of claims 1-6, 8-26, 29-34, 36-40 and 42-46 under § 103 over Haj-
Ahmad and Muzyczka
As discussed above, Muzyczka discloses replacing an essential gene[s] in the
AAV genome with a foreign DNA to form a recombinant AAV vector for introducing the
foreign DNA into the DNA of a host cell. This recombinant AAV vector and a plasmid
carrying the deleted essential AAV gene are cotransfected into a host cell infected with
an adeno or herpes virus.
Haj-Ahmad discloses adenovirus vectors wherein "nonessential" E1 and/or E3
regions of the virus have been replaced by a foreign DNA (N.B. E3 is nonessential for
adenovirus replication in cultured cells, while E1 is nonessential when the virus is
propagated in 293 cells which constitutively express the E1 gene products) (abstract).
According to the examiner, "it would have been obvious to insert the essential
AAV genes into an adenovirus as a convenient way of introducing both an adenovirus
and the essential AAV genes together into host cells for the production of AAV vectors"
(answer, p. 5, para. 1).
We have no doubt that the prior art could be modified in the manner proposed by
the examiner, however the fact that the prior art could be so modified would not have
made the modification obvious unless the prior art suggested the desirability of the
modification. In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984).
Here, we agree with appellants that the examiner has not established a prima
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