Appeal No. 1999-1389
Application No. 08/618,485
effective expression of Gc protein because ‘the ability of a given recombinant virus
to produce large quantities of foreign proteins must be determined empirically.’”
We note however, that appellant’s three quotations from Ausubel span 25 pages.
Within those 25 pages, Ausubel also discusses the popularity of the baculovirus
system, in addition to a number of advantages in using the system, e.g., “[o]ne of the
beauties of this expression system is a visual screen allowing recombinant viruses
to be distinguished [16.8.3].”
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 meeting this initial burden of establishing a prima facie case of
obviousness, there must be both some suggestion or motivation to modify the
references or combine reference teachings and a reasonable expectation of
success. In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir.
1991). As set forth in In re O’Farrell, 853 F.2d 894, 903, 7 USPQ2d 1673, 1681
“[o]bviousness does not require absolute predictability of success … [f]or
obviousness under § 103, all that is required is a reasonable expectation of
success” [citations omitted].
In our judgment, on these facts, we find that the examiner met his burden of
establishing that a person of ordinary skill in the art would have had a reasonable
expectation of success in cloning vitamin D3-binding protein into baculovirus
comprising the step of selecting and using a baculovirus vector, and in producing
macrophage activating factor comprising using the cloned vitamin D3 binding
protein in the method disclosed by Yamamoto.
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