Appeal 2007-2542
Application 10/623,891
THE REJECTION
The Examiner finds that a person of ordinary skill in the art would
have been motivated to have utilized the strategy of Witter ’97 (Finding of
Fact (“FF”) 1, 2) to make an attenuated vaccine strain within the scope of
claim 1 because Witter ’97 describes the advantages of RM1 for vaccine
development (immune response; replication; FF 3-4) and suggests it as “a
model for future vaccines” (FF 5) (Answer 5-6, 10-11).
The Examiner finds that persons of ordinary skill in would have been
motivated to have replaced the MDV strain JM/102W of Witter ’97 with the
CVI988/Rispens strain of Witter ’95 as the target for REV insertion because
Witter ’95 teaches that CVI988/Rispens does not cause thymic atrophy, a
deleterious effect that led Witter ’97 to conclude that RM1 would not be a
likely vaccine candidate (FF 5; Answer 6; Answer 10-11).
ANALYSIS
In making an obviousness determination over a combination of prior
art references, it is important to identify a reason why persons of ordinary
skill in the art would have attempted to make the claimed subject matter. See
KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1741, 82 USPQ2d 1385,
1396 (2007). The Examiner bears the initial burden, on review of the prior
art, of presenting a prima facie case of obviousness. In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
Here, the Examiner has provided careful reasoning explaining why
persons of ordinary skill in the art would have had reason to make the
claimed viral agent comprising CVI988/Rispens containing the REV LTR
insertion (see supra under “The Rejection”). Appellants do not identify a
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