Appeal No. 1997-2510
Application No. 07/868,539
corresponds to a sequence of DNA recognized by a viral-specific transcription
factor is linked to a second region having a sequence of nucleotides
complementary to said first region when the first and second regions are
positioned in an anti-parallel orientation. In contrast, claim 1 of Inouye is drawn
to a stem-loop structure (claim 1, part b) flanked on either side by a
transcriptional promoter segment (claim 1, part a) and a gene segment (claim 1,
part c). Accordingly, the sequence of DNA recognized by a viral-specific
transcription factor (e.g. “transcriptional promoter segment”) is not part of the
stem-loop structure, as is required by the instant claims.
To establish a prima facie case of obviousness, there must be more than
the demonstrated existence of all of the components of the claimed subject
matter. There must be some reason, suggestion, or motivation found in the prior
art whereby a person of ordinary skill in the field of the invention would make the
substitutions required. That knowledge cannot come from the applicants'
disclosure of the invention itself. Diversitech Corp. v. Century Steps, Inc., 850
F.2d 675, 678-79, 7 USPQ2d 1315, 1318 (Fed. Cir. 1988); In re Geiger, 815
F.2d 686, 688, 2 USPQ2d 1276, 1278 (Fed. Cir. 1987); Interconnect Planning
Corp. v. Feil, 774 F.2d 1132, 1143, 227 USPQ 543, 551 (Fed. Cir. 1985). On
the record before us, we find no reasonable suggestion for combining the
teachings of the references relied upon by the examiner in a manner which
21
Page: Previous 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Next
Last modified: November 3, 2007