Appeal No. 1998-1719
Application No. 08/442,603
7 of the specification illustrates the ligation of gcr.D21C into the pGB14 plasmid to
obtain pGB20.
Obviousness can only be established by combining or modifying the
teachings of the prior art to produce the claimed invention where there is some
teaching, suggestion, or motivation to do so found either in the references
themselves or in the knowledge generally available to one of ordinary skill in the art.
See In re Fine, 837 F.2d 1071, 1075, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). The
examiner merely argues (Answer, page 8) that it would have been obvious to “trim
the amount of untranslated sequences of a gene for optimization of the expression
of the encoded protein….” The examiner fails to identify a teaching, and we find no
such teaching of record, that would suggest to a person of ordinary skill in the art to
modify the translation start site of the glucocerebrosidase gene as was done in
appellants’ pGB20 construct. Levinson and Clark, relied upon by the examiner to
teach other components of the plasmid, e.g., ampicillin resistance and a
polyadenylation signal, fail to make up for the deficiencies found in Martin.
On these facts, we are constrained to reach the conclusion that the examiner
failed to provide the evidence necessary to support a prima facie case of
obviousness. Where the examiner fails to establish a prima facie case, the
rejection is improper and will be overturned. In re Fine, 837 F.2d 1071, 1074,
5 USPQ2d 1596, 1598 (Fed. Cir. 1988). Accordingly, we reverse the examiner’s
rejection of claim 14 under 35 U.S.C. § 103 as obvious over Martin in view of
Levinson and Clark.
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