Appeal No. 94-1775
Application 07/488,513
3. Claims 15 and 16
We vacate the prior art rejection as it pertains to these claims since we have no
analysis from the examiner in support of his conclusion that these two claims are
unpatentable. Claim 15 is directed to a yeast hybrid vector having specified DNA
sequences and claim 16 is directed to a yeast cell transformed with a hybrid vector
containing specified DNA sequences. These claims have not been separately discussed
by the examiner and appellants in this appeal. While these claims do not explicitly require
that the yeast hybrid vector or the yeast cell transformed with the hybrid vector must
function upon use to secrete proteins with hirudin activity into the culture medium in any
particular amount, their patentability must be determined with that property in mind. As set
forth in In re Papesch, 315 F.2d 381, 391, 137 USPQ 43, 51 (CCPA 1963), “a compound
and all of its properties are inseparable; they are one and the same thing.”
In our view, the same concept applies to composition of matter claims 15 and 16.
Until appellants and the examiner have separately addressed the merits of the patentability
of these claims, taking into account the properties possessed by the yeast
hybrid vector and transformed yeast cell, we are not in a position to render a final decision
on the patentability of these claims. It may be that yeast hybrid vectors according to claim
15 on appeal and transformed yeast cells according to claim 16 on appeal possess the
property of expressing proteins with hirudin activity over a wide range of values. Some
values within that range may reasonably be concluded to have been expected based upon
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