Appeal No. 94-1573 Paper No. 24
Application No. 07/552,744 Page 7
hypoxanthine-guanine phosphoribosyltransferase (HGPRT)
activity in P. falciparum. King was unable to express the
protein product and did not detect and characterize the
activity of any protein product of King's sequence. It
follows that King does not establish with any degree of
certainty that King's cDNA sequence would encode a protein
exhibiting HGPRT activity. One skilled in the art might
conclude that King's cDNA could express a protein exhibiting
HGPRT activity. Inherency, however, may not be established by
probabilities or possibilities. The fact that a result might
occur in a specific set of circumstances is not sufficient.
Mehl/Biophile Int'l Corp. v. Milgraum, __ F. 3d __, __,
52 USPQ2d 1303, 1305 (Fed. Cir. 1999).
The examiner has not established that King's cDNA
inherently encodes a protein that would exhibit HGPRT
activity, so the rejection of claim 2 under § 102(b) is
reversed. Claim 3 requires the same HGPRT activity as claim
2, and claim 4 depends from claim 3, so the rejection of these
claims must be reversed as well.
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: November 3, 2007