Appeal No. 1999-1510
Application No. 08/447,997
promoter. Hug discloses the cloning of the mouse Mx gene,2 including its
promoter, but does not suggest expressing a heterologous gene, much less the
SV40 large T antigen gene, under the control of the promoter. Mitchell discloses
cells and transgenic mice comprising the mouse Hox 1.3 protein under the
control of the Mx-1 promoter. The construct’s purpose was to test whether the
Hox 1.3 protein (which binds the regulatory region of some herpes simplex virus
genes) would affect HSV pathogenesis when “the Hox 1.3 protein is expressed
under the control of a virus-inducible regulatory element,” i.e., the Mx-1 promoter.
Page 4484, right-hand column. Mitchell does not suggest combining the Mx-1
promoter with a gene that promotes cell growth or proliferation.
Thus, we conclude that the cited references, although they disclose the
SV40 large T antigen gene and the Mx-1 promoter, do not provide the requisite
motivation to combine those elements. “Combining prior art references without
evidence of such a suggestion, teaching, or motivation simply takes the inventor’s
disclosure as a blueprint for piecing together the prior art to defeat patentability—
the essence of hindsight.” In re Dembiczak, 175 F.3d 994, 999,
50 USPQ2d 1614, 1617 (Fed. Cir. 1999) (citations omitted).
Since we conclude that the references do not support a prima facie case
under 35 U.S.C. § 103, we need not address Appellants’ evidence of unexpected
results.
2 Appellants do not dispute that Hug’s Mx gene is the same as the Mx-1 gene referred to in the
instant specification.
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