Appeal No. 94-2592
Application 07/707,265
in the art would have had no expectation that the claimed
eucaryotic protein (eglin) which is not N-acetylated in its
natural state, would be acetylated when expressed in
microorganisms which do not generally acetylate the N-termini
of their own endogenous proteins. Brief, pp. 9-10; Reply
Brief, pp. 7-8. We find statements by the examiner such as
[i]t is considered that such a state of the art does not
clearly teach away from appellants’ invention because the
state of the art was unsettled, there were both successes
and failures at expression of heterologous proteins, and
the successes were sufficient to give those of ordinary
skill in the art a reasonable expectation of successful
expression of any given protein with recombinant methods
[Answer, p. 7];
and
[t]he state of the art of acetylation of proteins was
unsettled at the time the invention was made. It was
known, however, as appellants point out (Brief, page 9,
line 16), that E. coli and S. cerevisiae do acetylate
some proteins. Because the state of the art at the time
the invention was made was not sufficiently predictive,
it would have been expected by one of ordinary skill that
any given protein may or may not be acetylated [Answer,
p. 8];
to show inconsistent reasoning and to be contrary to the
interpretation of obviousness as set forth in the prevailing
case law. If the state of the art with respect to (i) the
direct expression of small proteins in a recombinant host
cell, and (ii) the acetylation of proteins, was unsettled and
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