Appeal 2007-2542
Application 10/623,891
defect in this reasoning, and as we find none, we conclude that the Examiner
has met the burden of providing sufficient evidence to establish prima facie
obviousness of claim 1.
Once the Examiner has met his burden, the burden shifts to the
applicant to come forward with evidence or argument to rebut the prima
facie case. See Oetiker, 977 F.2d at 1445, 24 USPQ2d at 1444; Hyatt v.
Dudas, 492 F.3d 1365, 1369-70, 83 USPQ2d 1373, 1375-76 (Fed. Cir.
2007). Thus, we turn to Appellants’ arguments.
Appellants assert that the claimed CVI988 strain transformed with
REV LTR replicates faster than the parental strain as a result of the LTR
insertion upstream of the ICP4 gene (Appeal Br. 8). They contend that the
effect of the insertion to cause increased replication is not disclosed or
suggested in the prior art (Appeal Br. 8).
We do not find this argument persuasive. Claim 1 is not limited to a
recombinant MDV agent which shows increased replication over the
parental strain from which it was derived. Replication rate is not found in
claim 1. Thus, Appellants are attempting to distinguish claim 1 from the
prior art by a feature which is not recited in the claim.
Moreover, “CVI988/X” as recited in claim 1 is directed to a genus of
CVI988 strains.1 It is not evident that enhanced replication of one particular
1 “The recombinant Marek’s disease virus of this invention is produced by
transformation of Marek’s disease virus serotype 1 strain CVI988 or any of
its clones or serially passaged strains, which are collectively referred to
herein as strains CVI988/X. Thus, as used herein CVI988/X includes but is
not limited to the previously described original low-passage strain,
CVI988/Rispens . . . strain CVI988 clone C (CVI988/C) . . . and
CVI988/C/R6” (Specification 13: ¶ 54).
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