Appeal No. 94-1484
Application 07/536,556
Remaut et al. (Remaut), “Inducible High Level Synthesis of Mature Human Fibroblast
Interferon in Escherichia coli”, Nucleic Acids Research, vol. 11, no. 14, pp. 4677-4688,
(1983)
Holmes et al. (Holmes), “Cloning and Expression of the Gene for Pro-urokinase in
Escherichia coli,” Biotechnology, vol. 3, no. 10, pp. 323-29 (1985)
Renhof et al. (Renhof), “Synthesis and Functional Activity of Translation Initiation
Regions in mRNA,” FEBS, vol. 185, no. 2, pp. 277-81 (1985)
Hibino et al. (Hibino), “Enhanced Expression of Human Pro-urokinase cDNA in
Escherichia coli.” Agric. Biol. Chem., vol. 52, no. 2, pp. 329-336 (1988)
Claims 2, 4, 5, and 7 through 9 stand rejected under 35 U.S.C. § 103 as
unpatentable over Holmes in view of Hibino, Remaut, and Renhof. We reverse.
Discussion
By its terms, 35 U.S.C. § 103 requires that obviousness of claimed subject
matter be determined on the basis of the “subject matter as a whole.” Claim 9 on
appeal requires the use of a specific strain of microorganism, E. coli B. The examiner
has not explained where or how any of the four references relied upon, individually or
in combination, teach or suggest the use of E. coli B. Appellants argue this point at
2(...continued)
a reference is relied on to support a rejection, whether or not in a ‘minor capacity,’ there
would appear to be no excuse for not positively including the reference in the statement
of the rejection.” Accordingly, we have not considered Kane in deciding the issues
presented.
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