Appeal No. 1997-2515
Application No. 08/221,767
contrary, claim 1 is drawn to a nucleic acid sequence comprising 3 elements; (1) an
HCR enhancer of SEQ ID NO:1 or biologically active
fragment thereof operably linked to, (2) a promoter, and (3) a transgene. We remind
the examiner that every limitation positively recited in a claim must be given effect in
order to determine what subject matter that claim defines.
In re Wilder, 429 F.29 447, 450, 166 USPQ 545, 548 (CCPA 1970).
Furthermore, the examiner improperly shifts his burden of establishing a
prima facie case of obviousness to appellants. The examiner states (Answer, page
10):
Appellant admits [sic] that SEQ ID NO:1 was isolated from the larger
sequence disclosed by Simonet et al. Thus the promoter/enhancer
constructs of Simonet et al. are sequences which comprise SEQ ID
NO:1, and are therefore encompassed by the claims. Even if the
claims did not encompass the constructs of Simonet et al., Appellant
has [sic] not presented any evidence to suggest that the 774
nucleotide HCR functions any differently when isolated from the
remainder of the 5,700 nucleotide fragment disclosed by Simonet et
al. Absent any change in the functional characteristics of the HCR,
removal of extraneous sequences would have been obvious
optimization of parameters, which one of ordinary skill in the art would
have carried out in order to reduce the size of the construct (leaving
more space in the vector for the transgene of interest) [emphasis
original].
However, absent the examiner’s impermissible hindsight reconstruction and
reliance on appellants’ specification, the examiner fails to demonstrate that the
specific nucleotide sequence identified as SEQ ID NO:1 is present in the 5,700
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