Appeal No. 94-1775
Application 07/488,513
prior art relied upon by the examiner would have reasonably suggested that the specific
yeast containing the hybrid vector required by claim 18 on appeal secrete 90% or more of
the proteins with hirudin activity into the culture medium. At the point where we need a
specific, fact supported determination by the examiner, we are only left with a vague
conclusion on the part of the examiner.
Obvious determinations must be premised upon a consideration of the “subject
matter as a whole.” 35 U.S.C. § 103. Here, the examiner has failed to adequately come to
grips with the requirement of claim 18 on appeal that 90% or more of the proteins with
hirudin activity produced in that method are secreted into the culture medium. As a
consequence, the examiner has failed to properly discharge his initial burden of
establishing that the subject matter of claim 18, as a whole, would have been prima facie
obvious to one of ordinary skill in the art.
The rejection of claim 18 under 35 U.S.C. § 103 premised upon Chang is reversed.
2. Claims 1 and 5 through 14
Claim 1 differs from claim 18 in that claim 1 requires that “proteins with hirudin
activity are predominantly secreted into the culture medium” rather than at a level of 90% or
more. Thus, prior to determining whether the subject matter of claim 1 as a whole would
have been obvious to one of ordinary skill in the art based upon the applied references, a
determination must be made as to what is meant by the requirement of claim 1 that the
proteins with hirudin activity are predominantly secreted into the culture medium.
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