Appeal No. 1999-1458
Application No. 07/943,812
substitute one for another need not be present in order to render such
substitution obvious. In re Fout, 675 F.2d 297, 301, 213 USPQ 532, 536 (CCPA
1982).
According to appellants (Brief, page 9), the examiner ignored their
unexpected results. Specifically, appellants argue (Brief, pages 9-10) that
“[t]here is no teaching or suggestion in the prior art regarding the radiation
inducibility of the claimed constructs … [t]he examiner has not disputed these
facts and even admits that the radiation inducibility of the claimed constructs was
nonobvious.” To this the examiner argues (Answer, page 9), “[t]here is no
evidence of unexpected results. Radiation inducibility is a previously unknown
property of the jun and Egr-1 promoters, not an unexpected result of combining
the promoters with any coding sequence other than CAT.” Once again, on the
surface, there is some merit to the examiner’s argument. As set forth in In re
Dillon, 919 F.2d 688, 693, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990) (en banc):
There is no question that all evidence of the properties of the
claimed compositions and the prior art must be considered in
determining the ultimate question of patentability, but it is also clear
that the discovery that a claimed composition possesses a property
not disclosed for the prior art subject matter, does not by itself
defeat a prima facie case. … [In re Shetty, 566 F.2d 81, 86, 195
USPQ 753, 756 (CCPA 1977)]. Each situation must be considered
on its own facts, but it is not necessary in order to establish a prima
facie case of obviousness that both a structural similarity between
a claimed and prior art compound (or a key component of a
composition) be shown and that there be a suggestion in or
expectation from the prior art that the claimed compound or
composition will have the same or a similar utility as one newly
discovered by applicant.
In In re Shetty, 566 F.2d 81, 86, 195 USPQ 753, 756 (CCPA 1977), the court
found that:
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