Appeal No. 2001-0531 Page 6
Application No. 08/216,592
We do not agree that these statements would have led those skilled in the
art to combine the RXR taught by Mangelsdorf with Glass’ assay system. The
examiner has not adequately explained why those skilled in the art would have
found it desirable to achieve more elaborate control of transcription in an assay
like that disclosed by Glass. Taken in context, the reference in Glass to
“elaborate control of transcription” should be read to refer to “the necessary
complexity of transcriptional control that serves to regulate the processes of
growth, development, and homeostasis.”
The examiner has not adequately explained why this “complexity of
transcriptional control,” while “necessary . . . to regulate the processes of growth,
development, and homeostasis,” would be desirable in an in vitro assay to
identify agents that induce transactivation by heterodimers including RXR and
either RAR or TR. Thus, the examiner has not shown that the cited references
would have led those skilled in the art to combine their respective teachings.
In the absence of an adequate motivation to combine, the references do
not support a prima facie case under 35 U.S.C. § 103. The rejection is reversed.
2. The rejections based on Yu
The examiner rejected all of the claims as anticipated by Yu or obvious in
view of Yu, either alone or in combination with Hamada. Appellants do not
appear to dispute the substance of these rejections, but argue that they have
removed Yu as prior art via a declaration filed under 37 CFR § 1.131.
The examiner concedes that “the affidavits show that a manuscript
describing the claimed invention was sent to the United States prior to the
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007