Appeal No. 2002-1367 Page 8
Application No. 08/981,964
that regulation of the acetoacetyl-CoA thiolase gene occurs at the level of gene
transcription, the examiner has not met the burden of setting forth a prima facie
case of obviousness, and the rejection is reversed.
We agree with our colleague in dissent that the issue before us on appeal
was very close. We do not agree however, that the Servouse reference tips the
scales and demonstrates that one of ordinary skill in the art would have expected
the regulation of ACoAT expression to be carried out at the level of transcription.
First, with respect to Kirsch, that reference teaches “[a] method for
screening for sterol biosynthesis inhibitors . . . by the induction of lanosterol 14-
α-demethylase, an enzyme in the biosynthetic pathway of ergosterol and
cholesterol.” Kirsch, Abstract. Notably, Kirsch does not teach or suggest that
other enzymes that are part of the biosynthetic pathway of ergosterol would be
useful in the method.
As Hiser and Dequin are merely cited for teaching the nucleic acid
sequence from Saccharomyces encoding the acetoacetyl-CoA thiolase gene and
surrounding sequences, the focus falls on the Servouse reference to determine if
that reference provides sufficient motivation to use the acetoacetyl-CoA thiolase
gene in place of the lanosterol 14-α-demethylase in the method of Kirsch.
The dissent finds, based on the dictionary definitions of “repressing” and
“inducing,” that Servouse “provides sufficient evidence to show that those of skill
in the art would have considered transcriptional regulation of ACoAT expression
to be more likely than translational regulation.” As noted by appellants, however,
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