Appeal No. 2003-1594 Page 6
Application No. 08/970,266
Yamawaki-Kataoka is cited for teaching the complete nucleotide
sequence of mouse immunoglobulin gamma 2A gene. The rejection concludes:
From the knowledge of the murine immunoglobulin [gamma 2A]
gene sequence and the teachings of [Fell A or Fell B] it would have
been obvious to one skilled in the art at the time the invention was
made to modify the vectors of [Fell A or Fell B] to include the IgG2A
sequence [to] [sic] permit locus-specific homologous recombination
into the immunoglobulin [gamma 2A] gene locus. The combination
of [Fell A or Fell B] with Yamawaki-Kataoka [ ] do not teach the use
of NS/O cells but instead [Fell B] use murine hybridoma cells
substantially similar to NS/O cells. However, as admitted by the
specification applicant’s admitted prior art at page 3 of the
specification “NS/O” cells Galfre [ ] teach NS/O cells. Therefore it
would have been prima facie obvious to a person of ordinary skill in
the art at the time the invention was made to apply the teachings of
[Fell A or B] to that of Yamawaki-Kataoka [ ] to obtain a method
using an expression vector for the expression of recombinant
immunoglobulin genes in NS/O cells with the vector named
pIgG2A. A person of ordinary skill in the art would have been
motivated to produce the claimed method to express
immunoglobulin genes of interest.
Id. at 7.
The burden is on the examiner to set forth a prima facie case of
obviousness. See In re Alton, 76 F.3d 1168, 1175, 37 USPQ2d 1578, 1581
(Fed. Cir. 1996). With respect to an obviousness rejection based on a
combination of references, as the court has stated, “virtually all [inventions] are
combinations of old elements.” Environmental Designs, Ltd. V. Union Oil Co.,
713 693, 698, 218 USPQ 865, 870 (Fed. Cir. 1983); see also Richdel, Inc. v.
Sunspool Corp., 714 F.2d 1573, 1579-80, 219 U.S.P.Q. (BNA) 8, 12 (Fed. Cir.
1983) (“Most, if not all, inventions are combinations and mostly of old
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