Appeal No. 1999-1510
Application No. 08/447,997
The examiner also pointed out Robinson’s disclosure that “DNA encoding
SV40 large T antigen had previously been expressed under control of a promoter
that was responsive to interferon.” Id., page 5. This, he argues, “would have
motivated one of ordinary skill in the art to have considered and put the DNA
encoding SV40 large T antigen disclosed in the Robinson et al. reference under
the control of the mouse Mx promoter,” which was known to be induced by
interferon. Id. The examiner concluded that “[i]t would have been obvious to one
of ordinary skill in the art to have used the DNA disclosed in the combined cited
references to effect cellular immortalization that was highly regulated such as by
a promoter subject to induction control such as by interferon in the case of the
Mx promoter.” Id.
Appellants argue that the cited reference would not have led those skilled
in the art to combine the Mx-1 promoter with a proliferation-promoting gene such
as the SV40 large T antigen gene. Appeal Brief, pages 17-22. Appellants also
argue that they have presented evidence demonstrating the “unexpected
advantages” of the claimed combination, if any was needed to overcome a prima
facie case of obviousness. Appeal Brief, pages 22-24.
“In proceedings before the Patent and Trademark Office, the Examiner
bears the burden of establishing a prima facie case of obviousness based upon
the prior art. ‘[The Examiner] can satisfy this burden only by showing some
objective teaching in the prior art or that knowledge generally available to one of
ordinary skill in the art would lead that individual to combine the relevant
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