Appeal No. 2001-1378
Application No. 08/832,571
We disagree. The examiner has failed to provide evidence to support the
statement that expressing the two subunits as a fusion protein in vivo overcomes the
problem of inactivity which occurs when the two units are produced separately. We
note that the examiner does not rely on Hu, as a basis for this rejection.
After evidence or argument is submitted by the applicant in response to an
obviousness rejection, "patentability is determined on the totality of the record, by a
preponderance of evidence with due consideration to persuasiveness of the argument."
In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); see In
re Piasecki, 745 F.2d 1468, 1471-72, 223 USPQ 785, 787 (Fed. Cir. 1984) ("All
evidence on the question of obviousness must be considered, both that supporting and
that rebutting the prima facie case."). On balance, we believe that the totality of the
evidence presented by the examiner and appellants weighs in favor of finding the
claimed invention nonobvious over Klippel 93 and 94 in view of Kapeller, Varticovski
and Aronheim. The rejection is reversed.
CONCLUSION
The rejection of claims 1-9, 15-16, 22-30 and 33-34 under 35 U.S.C. § 103(a) as
obvious over Hu in view of Kapeller, Varticovski and Aronheim is affirmed. The
rejection of claims 1-9, 15-16, 22-30 and 33-34 under 35 U.S.C. § 103(a) as obvious
over Klippel 93 and 94 in view of Kapeller, Varticovski and Aronheim is reversed.
13
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007