Appeal No. 95-1569
Application 07/865,169
24 USPQ2d 1443, 1445 (Fed. Cir. 1992). A rejection under 35 U.S.C. § 103 must be
premised upon the "subject matter as a whole." 35 U.S.C. § 103(a). Focussing on that
portion of the subject matter as a whole which requires the presence of a gene capable of
expressing a pokeweed antiviral protein (PAP), we find that the examiner determined in
the first sentence of the Examiner’s Answer that Lodge discloses "isolation of a cDNA
clone encoding a PAP polypeptide." The examiner further determined at page 7 of the
Examiner’s Answer that Lodge discloses a "PAP-encoding cDNA."
The Lodge reference is in actuality an abstract of a presentation given at a
symposium. In relevant part, the abstract only reports that Lodge "isolated a cDNA clone"
of a PAP. The abstract does not give any details as to the nucleotide sequence of the
cDNA clone. Nor does the abstract give any details as to the manner in which the cDNA
clone was identified and isolated so that one of ordinary skill in the art could independently
obtain the discussed clone. In other words, Lodge does not describe a specific cDNA
clone encoding a PAP. Rather, all that Lodge describes is the authors’ announcement of
their success in identifying such a clone.
The examiner’s rejection of the claims on appeal under 35 U.S.C. § 103 is fatally
defective since it does not properly account for and establish the obviousness of the
subject matter as a whole. None of the references relied upon by the examiner describe a
nucleotide sequence encoding a PAP. Rather, Lodge only describes the authors’ success
in identifying and isolating such a nucleotide sequence. The examiner has not established
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