Appeal No. 1999-1676
Application No. 08/452,228
In response, the examiner argues (Answer, pages 7-8) that:
it is not the method that renders the Rhesus ob gene obvious
per se, but the fact that the ob gene of twelve species are
disclosed by Zhang et al. Therefore, one skilled in the art can
predictably acquire the DNA encoding the Rhesus ob gene
using the method of Zhang et al., and, for the most part, will
know what this gene looks like because Zhang et al. teach this
gene across twelve different species.
We recognize that claim 1 on appeal is drawn broadly to any nucleic acid
molecule that encodes a protein having the amino acid sequence of SEQ ID NO:2.
Given the degeneracy of the genetic code a large number of distinct nucleic acid
molecules are included within the scope of claim 1. Nevertheless, based on the
facts presented on this record we can not agree with the examiner’s position.
Conclusions of obviousness must be based upon facts, not generalities. In
re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967), cert. denied,
389 U.S. 1057 (1968); In re Freed, 425 F.2d 785, 788, 165 USPQ 570, 571 (CCPA
1970). On this record, there are no facts supporting the examiner’s generalization
that a person of ordinary skill in the art would have been able to isolate a rhesus ob
nucleic acid using the mouse ob gene. We are not persuaded by the examiner’s
argument that since the mouse ob gene was capable of hybridizing on a Southern
blot to mouse, rat, rabbit, vole, cat, cow, sheep, pig, human, chicken, eel, and
Drosophilia, that it would also be useful in isolating a rhesus ob gene. There is no
evidence on this record that a rhesus ob gene exists. Furthermore, appellants point
out there is no evidence on this
record that the mouse ob gene would be capable of hybridizing to a rhesus ob
nucleic acid or under what conditions said hybridization would occur. In our opinion,
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