Appeal No. 2001-1148 Page 10
Application No. 09/114,552
these references lead one to insert a reporter gene in a mouse chromosome.
There is nothing here that would guide one to use gene targeting to insert the
reporter gene or to locate the reporter gene such that “the expression of the reporter
is under the control of native gene expression regulatory sequences of the native ob
allele” as claimed. Examiner has not pointed to anything that can be considered as
giving one of ordinary skill that guidance.
The only reason we can find to use gene targeting to insert the reporter gene
and to locate the reporter gene such that “the expression of the reporter is under the
control of native gene expression regulatory sequences of the native ob allele” is
provided by appellants’ specification; that is, to accurately reflect ob gene
expression in a method for screening for agents which regulate the level of ob gene
expression (see specification , pp. 2-3). However, it is impermissible to use the
disclosure from appellants’ specification as a blueprint to reach the claimed
invention from the prior art disclosure. “When prior art references require selective
combination by the court to render obvious a subsequent invention, there must be
some reason for the combination other than the hindsight gleaned from the invention
itself.” Uniroyal Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434,
1438 (Fed. Cir.), cert. denied, 118 S.Ct. 1548 (1988). Nevertheless, one cannot rely
on appellants’ disclosure to support a case of obviousness. Obviousness can not
be established by hindsight combination to produce the claimed invention,” In re
Dance, 160 F.3d 1339, 1343, 48 USPQ2d 1635, 1637 (Fed. Cir. 1998). Since the
only reason for employing a reporter gene as claimed is provided by the
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007