Appeal No. 94-2156
Application 07/888,366
Thus, one of ordinary skill in the art would have kept
probing until encountering the intact terminator (i.e.,
including polyadenylation signal) and such a sequence
would have inherently encoded the rest of the naturally
encoded previously unknown polypeptide portion C-terminal
to the N-terminal 43 amino acid sequence which was known.
In our view, rather than expect to isolate cDNA which encodes
a 204 amino acid hevein preprotein, persons having ordinary
skill in the art would keep searching until they inevitably
would find cDNA which encodes something quite new and
different. This is not obviousness within the meaning of 354
U.S.C. § 103. This is surprise which is indicative of
patentability.
B. Rejections under 35 U.S.C. § 102(f) and § 103
But for the fact that the claimed subject matter in In re
Katz, 687 F.2d 450, 215 USPQ 14 (CCPA 1982), was rejected
under 35 U.S.C. § 102(g) over prior publications whose
authorship included a student not named as a coinventor of the
subject matter claimed in the patent application and the
4 We note here that U.S. Patent 5,187,262, which
issued from parent Application 07/587,071, claims “[a] protein
. . . consisting of the sequence of 204 amino acids shown in
Fig. 2 and subfragments of said sequence larger than the 43
amino acid hevein sequence which includes the hevein sequence
and which binds chitin.” We wonder how the same examiner can
reasonably suggest that cDNA which encodes a patentable
protein would have been obvious over the same prior art over
which the protein was allowed.
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