Appeal No. 95-2052
Application 07/620,939
the statement of rejection. As stated in In re Hoch, 428 F.2d 1341, 1343-44 n3, 166 USPQ 406, 407
n3 (CCPA 1970),
Where 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.
Where, as here, Frankel and Williams et al. are not included in the statement of rejection under 35
U.S.C. § 103, we shall not consider them further. We have limited our review to the references
positively included in the examiner's statement of rejection, namely, Batra 1989, Batra 1990, Pastan,
Youle, and Kondo.
Turning to the merits, we find that independent claim 8 defines a specific fusion protein
"including a diphtheria toxin (DT) portion that consists of the first 388 amino acids of DT". In our
judgment, the prior art relied on by the examiner is insufficient to support a conclusion of obviousness of
claims containing that limitation.
Appellants argue strenuously that the prior art relied on by the examiner would not have
suggested a fusion protein "including a diphtheria toxin (DT) portion that consists of the first 388 amino
acids of DT." For example, see the Appeal Brief filed October 28, 1993, page 6, second paragraph;
and the Reply Brief filed March 4, 1994, page 3, third full paragraph; page 4, last paragraph; and page
5, first full paragraph. The examiner does not adequately come to grips with that argument. The
examiner relies on Youle's disclosure (page 117) of a portion of the diphtheria toxin extending from
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