Ex parte Spana et al.

Board of Patent Appeals and Interferences

Jul 28, 2000

08129722 (B.P.A.I. Jul. 28, 2000)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.
Paper No. 27
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte CARL SPANA, JOSEPH FARGNOLI,
and JOSEPH BOLEN
__________
Appeal No. 1996-2210
Application 08/129,722
__________
ON BRIEF
__________
Before WINTERS, WILLIAM F. SMITH, and LORIN, Administrative Patent Judges.
WINTERS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal was taken from the examiner=s decision rejecting claims 1 through 4, 6
through 17, and 22 through 26, which are all of the claims remaining in the application.
Claims 1 and 23, which are illustrative of the subject matter on appeal, read as follows:
1. An expression vector, comprising:
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Application 08/129,722
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(a) a first coding region, which codes for glutathione-S-transferase, operatively
connected to a baculovirus promoter,
(b) a second coding region in-frame with the first coding region, and
(c) a restriction region containing at least one restriction site downstream of the first
coding region, into which the second coding region is inserted;
wherein a fusion protein encoded by the first and second coding regions would be produced
by expression of the vector.
23. An expression vector, comprising:
(a) a first coding region, which codes for glutathione-S-transferase, operatively
connected to a promoter, and
(b) a restriction region downstream of the first coding region having the sequence of
SEQ. ID No.:5, which allows for insertion of a second coding region in-frame with the first
coding region.
The references relied on by the examiner are:
Ausubel et al. (Ausubel), Short Protocols In Molecular Biology, Second Edition, AA
Compendium of Methods from Current Protocols in Molecular Biology,@ John Wiley & Sons,
pp. 16-28-16-48 (1992).
PCT (Laroche) WO 91/16353 Oct. 31, 1991
The issues presented for review are:
(1) whether the examiner erred in rejecting claims 1 through 4, 6 through 17, and 22
under 35 U.S.C. ' 103 as unpatentable over Ausubel; and
Appeal No. 1996-2210
Application 08/129,722
3
(2) whether the examiner erred in rejecting claims 23 through 26 under 35
U.S.C. ' 103 as unpatentable over the combined disclosures of Ausubel and Laroche.
On consideration of the record, we affirm the rejection of claims 1 through 4, 6
through 17, and 22. However, we reverse the rejection of claims 23 through 26.
DISCUSSION
In their Appeal Brief, applicants do not argue the patentability of claims 2
through 4, 6 through 17, and 22 separately from claim 1. Accordingly, for the purposes of
this appeal, we shall treat claims 2 through 4, 6 through 17, and 22 as standing or falling
together with claim 1.
For the reasons succinctly stated by the examiner (Examiner=s Answer, Paper No.
21, paragraph bridging pages 3 and 4), we conclude that the subject matter sought to be
patented in claim 1 would have been prima facie obvious in view of Ausubel. It would have
been prima facie obvious to produce a fusion protein of a desired eukaryotic protein and
glutathione-S-transferase (GST), using a baculovirus promoter in a baculovirus system, to
exploit the known advantages of that system and, simultaneously, to permit easy isolation
of the desired protein using glutathione-agarose beads.
Applicants rely on results presented in their specification, particularly page 17, lines
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Application 08/129,722
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9 through 11; page 18, lines 23-26; and Figures 3A and 3B, to rebut the prima facie case
of obviousness. That reliance is misplaced. It is well settled that objective evidence of
non-obviousness must be commensurate in scope with the claims which the evidence is
offered to support. In re Grasselli, 713 F.2d 731, 743, 218 USPQ 769, 778 (Fed. Cir.
1983); In re Greenfield, 571 F.2d 1185, 1189, 197 USPQ 227, 230 (CCPA 1978); In re
Clemens, 622 F.2d 1029, 1035, 206 USPQ 289, 296 (CCPA 1980). That is not the case
here. For the reasons ably set forth by the examiner (Examiner=s Answer, Paper No. 21,
paragraph bridging pages 7 and 8), we find that applicants= evidence of non-obviousness
in the specification is not adequately representative or commensurate in scope with claim
1 on appeal. Accordingly, we find that applicants= specification evidence is insufficient to
rebut the prima facie case of obviousness.
On these facts, we hold that claim 1, considered as a whole, would have been
obvious within the meaning of 35 U.S.C. ' 103 in view of Ausubel. As previously
indicated, claims 2 through 4, 6 through 17, and 22 fall together with claim 1. The
examiner=s decision, rejecting claims 1 through 4, 6 through 17, and 22 under 35
U.S.C. ' 103, is affirmed.
The examiner=s position to the contrary, notwithstanding, we conclude that the
subject matter sought to be patented in claims 23 through 26 would not have been prima
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Application 08/129,722
5
facie obvious based on the combined disclosures of Ausubel and Laroche. For the
reasons succinctly set forth in the Appeal Brief, page 5, lines 12 through 24, we hold that
(1) the invention recited in claims 23 through 26 is not the result of Aroutine design choice@
given the combined disclosures of Ausubel and Laroche; and (2) the examiner=s rejection
falls prey to the use of impermissible hindsight.
The examiner=s decision, rejecting claims 23 through 26 under 35 U.S.C. ' 103, is
reversed.
In conclusion, the examiner=s decision is affirmed-in-part.
No time period for taking any subsequent action in connection with this appeal may
be extended under 37 CFR ' 1.136(a).
AFFIRMED-IN-PART
)
)
SHERMAN D. WINTERS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
WILLIAM F. SMITH )
Administrative Patent Judge ) APPEALS AND
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Application 08/129,722
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)
) INTERFERENCES
)
)
HUBERT C. LORIN )
Administrative Patent Judge )
SDW/cam
Appeal No. 1996-2210
Application 08/129,722
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Burton Rodney
Bristol-Myers Squibb Company
P. O. Box 4000
Princeton, NJ 08543-4000