Appeal No.2001-1258 Page 7
Application No. 08/413,805
Bumol et al.” Examiner’s Answer, page 7. Therefore, the examiner concluded
that claim 4 would also have been prima facie obvious.
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial
burden of presenting a prima facie case of obviousness.” In re Rijckaert, 9 F.3d
1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993). “[A] proper analysis under
§ 103 requires, inter alia, consideration of two factors: (1) whether the prior art
would have suggested to those of ordinary skill in the art that they should make
the claimed composition or device, or carry out the claimed process; and (2)
whether the prior art would also have revealed that in so making or carrying out,
those of ordinary skill would have had a reasonable expectation of success.”
In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1443 (Fed. Cir. 1991) (citation
omitted).
In this case, we agree that the cited references support a prima facie case
of obviousness. Szala teaches the complete DNA sequence of the GA733-2
gene and the complete amino acid sequence of the encoded polypeptide, and
specifies the sequences making up the various domains of the polypeptide. See
the paragraph bridging pages 3544 and 3545. Bumol discloses a soluble
GA733-2 variant, albeit for expression in prokaryotic cells and lacking the signal
sequence and so-called propeptide. See page 13, lines 31-59. These teachings
by themselves may not have rendered the instantly claimed GA733-2 variant
obvious, in that they do not seem to suggest a variant that lacks the
transmembrane and cytoplasmic domains while retaining the signal sequence
and entire extracellular domain.
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