Appeal No. 1999-1458
Application No. 07/943,812
In contrast to the facts in evidence on this record, in Dillon, 919 F.2d at
692, 16 USPQ2d at 1900-01 there was an art recognized equivalence between
the tri-orthoesthers of the primary reference and the tetra-orthoesthers of the
secondary reference. In Shetty, cited in Dillon, the structural similarity between
the prior art compound and the claimed compound was such that one would
have expected the two compounds to possess similar properties; evidence of
unexpected properties was not of record. On this record, there is no evidence
that the prior art structural genes are equivalent to each other. Furthermore,
there is no evidence that appellants’ promoter is equivalent to the prior art
promoters. In addition, appellants demonstrate that their promoter has an
unexpected advantage over other promoters (such as those found in the
secondary references); specifically appellants’ promoter is radiation responsive.
On reflection, in our opinion, there is no suggestion for combining the
teachings of the references relied upon by the examiner in a manner that would
have reasonably led one of ordinary skill in this art to arrive at the claimed
invention. 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). On this record, the examiner failed to provide the
evidence necessary to support a prima facie case of obviousness. Accordingly,
we reverse the rejection of claims 1, 3-21, 36, 48-50 and 52-59 under 35 U.S.C.
§ 103 as being unpatentable over Christy or Angel in view of any one of
Bonthron, Johnsson, Mark, Moolten, Hung, Orr, Ghosh or Brent.
OTHER ISSUES:
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