Appeal No. 2001-1148 Page 9
Application No. 09/114,552
reporter is under the control of native gene expression regulatory sequences of the
native ob allele” as claimed. Accordingly, combining Tartaglia and Sista would not
lead one to the claimed invention and, therefore, they are not a sufficient basis on
which to establish a prima facie case of obviousness for the claimed invention.
We recognize that each and every element that is claimed appears in one of
Tartaglia, Kress, Kitamoto and/or Sista. However, the mere fact that the prior art
could be modified to obtain the claimed process does not make the modification
obvious unless the prior art suggested the desirability of the modification. In re
Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). Something in
the prior art as a whole must suggest the desirability of isolating the claimed
adipocyte from a genetic knock-in cell made by homologous recombination of a
native ob allele with a transgene comprising a sequence encoding a reporter.
Lindemann Maschinenfabrik GmbH v. American Hoist and Derrick Co., 730 F.2d
1452, 1462, 221 USPQ 481, 488 (Fed. Cir. 1984). We fail to find anything in the
prior art that would lead one of ordinary skill in the art to the make the modifications
discussed by the examiner.
Examiner (Examiner’s Answer, p. 10) argues that “one would be motivated to
combine the teachings of Tartaglia, Sista, Kitamoto, and Kress in constructing a
transgenic knock-in mouse comprising a reporter gene driven by a native promoter
in the natural chromosomal context.” We do not agree. Looking at these four
references, and in view of our earlier discussion, the best that can be said is that
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