Appeal No. 2003-2091 Page 6
Application No. 09/266,465
one must select particular species of gene from a very large genus, and
then select a particular species of promoter form a similarly large genus of
possible promoters. And even then, the claimed invention is still not
taught, as these particular elements must be combined. Forcing the
skilled artisan to make each of these selection[s] is akin to asking . . . that
person to modify the prior art. That is not anticipation.
Id., page 9.
We agree with Appellants that Zhang does not anticipate the instant claims.
“Under 35 U.S.C. § 102, every limitation of a claim must identically appear in a single
prior art reference for it to anticipate the claim.” Gechter v. Davidson, 116 F.3d 1454,
1457, 43 USPQ2d 1030, 1032 (Fed. Cir. 1997). “Every element of the claimed
invention must be literally present, arranged as in the claim.” Richardson v. Suzuki
Motor Co., Ltd., 868 F.2d 1226, 1236, 9 USPQ2d 1913, 1920 (Fed. Cir. 1989).
The examiner has not pointed to a single, specific construct disclosed by Zhang
that includes all of the limitations of the instant claims. Rather, the examiner has
pointed to the disclosure in Zhang’s columns 2, 25, 27-30, and 38-39. Those columns
describe particular promoters that can be used in adenoviral vectors (column 2, lines
34-38, and columns 27-30), specific therapeutic genes that can be included in
adenoviral vectors as cancer treatment agents (column 2, lines 46-57, and columns 23-
26), and pharmaceutical compositions (columns 38-39). Thus, as Appellants point out,
deriving the claimed adenoviral constructs from Zhang’s disclosure requires picking a
promoter from among the many promoters disclosed by Zhang, some of which are not
inducible and some of which are not non-adenoviral promoters, then picking a
therapeutic gene from among the many possible genes disclosed by Zhang, only a few
of which are proapoptotic members of the Bcl-2 gene family.
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