Appeal No. 2002-1367 Page 4
Application No. 08/981,964
promoter of the constructs of Kirsch [ ] with the 5' upstream region
of the acetoacetyl-CoA thiolase gene of Dequin [ ] or Hiser [ ] in
order to find inhibitors of sterol biosynthesis at any point along the
biosynthesis pathway as acetoacetyl-CoA thiolase is the first
enzymes [sic] of the sterol biosynthesis pathway.
Id. at 5.
Appellants argue that while Kirsch teaches a method for screening for
sterol biosynthesis inhibitors based on the induction of lanosterol 14-α-
demethylase, there is no suggestion of using another gene, such as the gene
encoding the acetoacetyl-CoA thiolase enzyme, in the method. Appellants
contend that “there is no teaching or suggestion in the cited references that
feedback regulation occurred at least in part by regulation of transcription. Such
a conclusion is apparently made with hindsight reconstruction of Appellants’
invention using the teachings of their own specification.” Appeal Brief, pages 5-6
(emphasis in original). Appellants argue further that “there does not appear to be
any teaching or suggestion in the cited references that it would have been
desirable to substitute the ACoAT gene promoter for the lanosterol 14-α-
demethylase gene promoter used by Kirsch [ ] at the time Appellants’ invention
was made.” Appeal Brief, page 7. We agree.
“A rejection based on section 103 clearly must rest on a factual basis, and
these facts must be interpreted without hindsight reconstruction of the invention
from the prior art. In making this evaluation, all facts must be considered. The
Patent Office has the initial duty of supplying the factual basis for its rejection. It
may not, because it may doubt that the invention is patentable, resort to
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