Appeal No. 1999-1157
Application No. 08/482,321
However, a conclusion of prima facie obviousness, does not end a
patentability determination under 35 U.S.C. § 103. As stated in In re Hedges, 783
F.2d 1038, 1039, 228 USPQ 685, 686 (Fed. Cir. 1986):
If a prima facie case is made in the first instance, and if the applicant
comes forward with reasonable rebuttal, whether buttressed by
experiment, prior art references, or argument, the entire merits of the
matter are to be reweighed. In re Piasecki, 745 F.2d 1468, 1472,
223 USPQ 785, 788 (Fed. Cir. 1984).
Here, appellants provide evidence of unexpected results. Specifically, appellants
argue (Brief, page 6) that “the surprisingly high yields of polypeptides obtained
using the claimed invention turned a laboratory phenomenon into an industrially [sic]
process [of] producing recombinant polypeptides.”
In response to appellants’ arguments concerning the lack of motivation to
combine Miozzari with Cohen, the “Examiner strongly disagrees [Answer, page 6]
that the record does not contain a motivation for the combination. … Miozzari et al.
show that deletions of a sequence between the operator and the trp E coding region
can increase the expression of structural genes.”
With respect to the examiner’s arguments concerning increased expression
due to the trp promoter, appellants argue (Brief, bridging paragraph, pages 10-11)
that:
Appellants cannot stress strongly enough that Bertrand et al’s and
Miozzari et al’s demonstration of increased expression from an
attenuator-deleted trp promoter as compared to an intact trp promoter
does not, in any way, suggest that an attenuator-deleted trp promoter
would provide increased expression as compared to the lac
promoter employed by Cohen et al. It is essential for the Examiner to
7
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007