Appeal No. 1999-1157
Application No. 08/482,321
meets this limitation of appellants’ claimed invention. Cohen and Goeddel fail to
make up for this deficiency in Bertrand.
The initial burden of presenting a prima facie case of obviousness rests on
the examiner. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed.
Cir. 1992). In satisfying this initial burden, 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). Here
the examiner failed to meet her burden of establishing a prima facie case of
obviousness. Accordingly, we reverse the rejection of claims 1, 9, 10 and 35-37
under 35 U.S.C. § 103 as obvious over Cohen in view of Bertrand and Goeddel.
Cohen in view of Miozzari (R), Miozzari (S) and Goeddel:
Miozzari (R), however, teach (Miozzari (R), figure 1) two constructs
trp?LE1417, and trp?LE1413. Both of these constructs meet the limitation of
appellants’ claim 1 section (iv) with respect to “a structural gene … comprising 6
amino acids of the trp leader peptide, [and] … at least about the distal third of the
trp E polypeptide….” In fact, we note that appellants’ specification (page 10, lines
28-34) discloses:
Two particularly useful plasmids from which the attenuator
region has been deleted are the plasmids pGM1 and pGM3, G.F.
Miozzari et al, J. Bacteriology 133, 1457 (1978). These respectively
carry the deletions trp?LE1413 and trp?LE1417 and express (under
the control of the trp promoter-operator) a polypeptide comprising
aproximately the first six amino acids of the trp leader and distal
regions of the E polypeptide. In the most preferred case, pGM1, only
about the last third of the E polypeptide is expressed whereas pGM2
expresses almost the distal one half of the E polypeptide codons.
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