Appeal No. 2001-1378
Application No. 08/832,571
In rejecting claims under 35 U.S.C. ' 103, the examiner bears the initial burden
of presenting a prima facie case of obviousness. See In re Rijckaert, 9 F.3d 1531,
1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie case of obviousness is
established when the teachings from the prior art itself would appear to have suggested
the claimed subject matter to a person of ordinary skill in the art. In re Bell, 991 F.2d
781, 783, 26 USPQ2d 1529, 1531 (Fed. Cir. 1993). An obviousness analysis requires
that the prior art both suggest the claimed subject matter and reveals a reasonable
expectation of success to one reasonably skilled in the art. In re Vaeck, 947 F.2d 488,
493, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991).
It is the examiner=s position that (Answer, page 3-4):
Hu et al. disclose the p110* construct, which comprises DNA encoding the
p110 subunit of PI 3-kinase and the iSH2 portion of the p85 subunit,
attached via a “glycine kinker [sic]” (See Fig. 1, page 100). In the
disclosed p110* construct, the nucleotide sequences encoding the Myc-
tagged p110 subunit and the iSH2 portion of the p85 subunit having a
“glycine kinker [sic]” at the COOH terminus also represent nucleotide
sequences encoding for a derivative or mutant of the wild type p110
subunit and a portion of the wild type p85 subunit, respectively, as
encompassed in certain embodiments of the instantly claimed invention...
The p110* DNA construct and various derivatives thereof were transiently
transfected and expressed in COS-7 cells.... Immunoprecipitates of
transfected cells’ lysates containing the enzyme were analyzed for the
expression level and for the PI-3 kinase activity via the production of [32P]
PI-3 phosphate (PIP). The encoded p110* protein is found to be a
constitutively active form of PI 3-kinase. ...
Hu et al. do not teach a construct further comprising DNA encoding a
membrane targeting sequence. However, Kapeller et al. teach that
localization of PI 3-kinase to the plasma membrane is expected to
increase the 3-kinase activity, since it brings the enzyme into closer
contact with its substrates... Varticovski et al. also teach that PI 3-kinase
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