Appeal No. 2003-2091 Page 9
Application No. 09/266,465
different members. The examiner has pointed to nothing in Zhang indicating a
preference for inducible promoters over other types of promoters, or indicating a
preference for proapoptotic members of the Bcl-2 gene family over other cancer
therapeutic genes.
Thus, the record does not indicate that one skilled in the art, on reading the
Zhang patent, would have at once envisaged each member of a limited class, as in
Petering. Zhang does not describe with specificity any product within the scope of
claim 1. The rejection for anticipation is therefore reversed.
3. Obviousness
The examiner rejected claims 7, 108, 109, and 115 as obvious in view of Zhang
combined with other prior art references. Each of these rejections, however, cited
Zhang as disclosing the basic adenoviral construct defined in claim 1, and relied on the
other references to meet limitations of the dependent claims. The examiner did not cite
any evidence or provide any reasoning to show that those skilled in the art would have
found it obvious to combine a specific promoter (or class of promoters) with a
proapoptotic member of the Bcl-2 gene family.
Since we have already concluded that Zhang does not describe an adenoviral
construct within the scope of claim 1, and the examiner has not shown that Zhang
would have made such a construct obvious, our reversal of the § 102 rejection
mandates reversal of the § 103 rejections as well.
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