Appeal No. 1997-2139
Application No. 08/114,595
facie case of obviousness because the prior art does not disclose or suggest that
essential AAV gene(s) should be incorporated into an adenoviral or herpesviral genome
(brief, p. 10). The examiner has not pointed out, and we do not find, where Haj-
Ahmad discloses or suggests that the essential AAV gene, found only in the second,
nonreplicating plasmid of Muzyczka, should be inserted into the helper virus of
Muzyczka in order to compensate for defects in the AAV vector of Muzyczka.
The adenovirus vector of Haj-Ahmad delivers its inserted foreign DNA into the
genome of the host cell. The examiner has not explained why one of ordinary skill in
the art would create an adenovirus vector with a foreign DNA which would not be stably
integrated into the genome of the host cell. The examiner has not explained why one of
ordinary skill in the art would combine the helper-independent viral vector system of
Haj-Ahmad with the helper-dependent viral vector system of Muzyczka. In our
judgment, the only reason or suggestion to combine the references in the manner
proposed by the examiner comes from appellants' specification. Thus, we find the
examiner has not carried his burden of establishing a prima facie case of obviousness
and has relied on impermissible hindsight in making his determination of obviousness.
In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1784 (Fed. Cir. 1992) (“It is
impermissible to engage in hindsight reconstruction of the claimed invention, using the
applicant’s structure as a template and selecting elements from references to fill the
gaps.).
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