Appeal No. 1999-1458
Application No. 07/943,812
even if there is not an express suggestion to substitute one equivalent
component for another.” It is this statement, however, that illustrates the
deficiency in the examiner’s prima facie case. As we understand the examiner’s
reasoning, as a general proposition, it would have been obvious to substitute
known equivalent coding sequences, or known equivalent promoters.
It is, however, not entirely clear on this record what the examiner may
mean by equivalent coding sequences. Furthermore, we find that the examiner
has not established that the coding sequences are “equivalent.” Instead, the
examiner finds (Answer, page 5) that each coding sequence encodes a different
protein. Without a showing of equivalence the examiner has not established a
prima facie case of obviousness.
That leaves the promoters. The examiner’s position appears to be, since
the promoters of either Angel or Christy are “equivalent” to the promoters set
forth in the secondary references it would be obvious to substitute one for the
other. The examiner, however, failed to demonstrate that any of the promoters
used by the secondary references are in fact radiation responsive, and therefore
“equivalent” to the promoter of either Angel or Christy. Stated differently, there is
no evidence on this record demonstrating that the promoters of the secondary
references are radiation responsive. Therefore, there is no evidence on this
record that the Angel or Christy promoters are equivalent to the promoters of the
secondary references. Without a showing of equivalence the examiner has not
established a prima facie case of obviousness.
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