Appeal No. 1999-1330
Application No. 08/527,373
expectation of success. One of ordinary skill in the art would
have been motivated to combine these teachings given that
all three references are related to the regression of
carcinoma using wild-type p53.
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). On the record before us, we find no error in the examiner's determination that
the combined disclosures of Wills, Liu, and Nabeya are sufficient to establish a prima
facie case of obviousness within the meaning of 35 U.S.C. § 103 as to the subject
matter of representative claim 1.
Thus, the examiner has provided evidence which would reasonably establish
that the claimed subject matter would have been prima facie obvious within the
meaning of 35 U.S.C. § 103 at the time of the invention. Where, as here, a prima facie
case of obviousness has been established, the burden of going forward shifts to the
appellants. In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984),
In re Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976).
Appellants, initially, argue that (Brief, page 6):
Wills only discloses the administration of adenoviral vectors
including a p53 gene to nude mice having an established
tumor. Wills provides no examples in which tumors are
treated with a combination of p53 gene therapy and
radiation. Applicants are aware of the citation by the
Examiner of the passage at Page 1086, column 2, of Wills
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