Appeal No. 1999-1458
Application No. 07/943,812
THE REJECTION UNDER 35 U.S.C. § 103:
The examiner finds (Answer, bridging sentence, page 4) that Christy
“disclose[s] DNA constructs comprising the Egr-1 … promoter linked to the CAT
reporter gene… [demonstrating] that a heterologous gene can be expressed
under control of the Egr-1 promoter….” In addition, the examiner finds (Answer,
page 5) that Angel “demonstrate[s] that a heterologous gene can be expressed
under control of the c-jun promoter….” However, the examiner finds (id.) that
“[n]either Christy et al. nor Angel et al. disclose DNA constructs in which the
promoter is linked to a gene encoding a ‘therapeutic’ polypeptide.”
To make up for the deficiency of Christy and Angel, the examiner relies
(Answer, page 5) on any one of Bonthron, Johnsson, Mark, Moolten, Hung, Orr,
Ghosh or Brent, which teach the coding sequence of various proteins. With this
the examiner concludes (Answer, page 6) that:
It would have been obvious to one of ordinary skill in the art at the
time the invention was made to link either of the promoters taught
by Christy et al. and Angel et al. to any of the coding sequences
disclosed by Bonthron et al., Johnsson et al., Mark et al., Moolten
et al., Hung et al., Orr et al., Ghosh et al. or Brent et al., in order to
express the coding sequence.
According to the examiner (Answer, page 8) a person “of ordinary skill in the art
knew that any coding sequence could be linked to any promoter for expression
of the coding sequence. It is obvious to substitute known equivalents for the
same purpose, even if there is not an express suggestion to substitute one
equivalent component for another….” On the surface, the examiner appears to
make out a reasonable prima facie case of obviousness. We note that when the
prior art recognizes two components to be equivalent, an express suggestion to
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