Appeal No. 1999-1458
Application No. 07/943,812
Appellant merely shows that his novel compounds are appetite
suppressants whereas the reference compounds are not so known.
… Presented with such an absence of comparative or other
evidence with respect to the properties of the compounds and the
claimed composition, we hold that [the] composition … would have
been obvious from and unpatentable over the prior art.
These cases appear to be consistent with the examiner’s conclusion
(Answer, page 11) that “[a]ppellants discovered that the promoters are …
induced by radiation. On the basis of this discovery, they wish to exclude others
from using the promoters in combination with any coding sequence other than
CAT, for any purpose. The [e]xaminer’s interpretation of the law is that this is
not permitted.” But, if one looks under the surface, the facts of record in this
case do not lead to the examiner’s conclusion.
The claimed invention is drawn to “[a]n isolated and purified DNA
molecule comprising a radiation responsive enhancer-promoter operatively
linked to an encoding region that encodes at least one peptide, other than
CAT.…” According to the examiner (Answer, page 9), that the claimed promoter
is radiation responsive is an inherent property of the promoter; it is not the
“unexpected” result of combining this regulatory sequence (promoter) with a
structural sequence other than CAT. We agree with this part of the examiner’s
analysis. However, the analysis does not end there.
In responding to appellants’ arguments it appears that the examiner more
fully develops his prima facie case of obviousness. According to the examiner
(Answer, pages 8-9) “[t]hose 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,
8
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: November 3, 2007