Appeal No. 1999-1351
Application 08/471,884
In other words, for Chang, the expression of mammalian DHFR by a bacterial host (E.
coli) and the assay are inextricably linked. If Chang’s E. coli strain did not express
DHFR, there would have been no need for Chang to carry out the disclosed assay. In
view of the foregoing, we believe that the examiner’s rejection under 35 U.S.C. § 103 is
predicated on the impermissible use of hindsight. The examiner relies on Chang’s
disclosure to reach the assay steps recited in claim 31. Note, however, that the
appealed claim also calls for “host cells in which the protein encoded by the mammalian
gene is not expressed” (emphasis added). See claim 31, step (a). In our judgment, a
fair interpretation of the Chang reference would not have led a person having ordinary
skill in the art to the assay steps recited in claim 31 in combination with “host cells in
which the protein encoded by the mammalian gene is not expressed” (emphasis
added). Again, Chang’s E. coli strain expresses bacterial DHFR and, for Chang, the
expression of mammalian DHFR by a bacterial host and the assay are inextricably
linked. Furthermore, the disclosures of Goddard, Kataoka, and Lee do not cure the
above-noted deficiency in the disclosure of Chang. For this reason, we reverse the
rejection of claim 31 under 35 U.S.C. § 103 as unpatentable over the combined
disclosures of Goddard, Kataoka, Lee, and Chang.
One further matter warrants attention. At the oral hearing on August 9, 2001,
counsel acknowledged that claim 31 on appeal and claim 10 in US Patent No.
6,080,540, issued June 27, 2000, are not patentably distinct.2 Counsel further
expressed a willingness to file a terminal disclaimer in this application. Accordingly, on
return of this application to the examining corps, we recommend that the examiner:
2 At the oral hearing, Greta E. Noland (Registration No. 35,302) argued on behalf of the applicants.
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