Appeal No. 94-1573 Paper No. 24
Application No. 07/552,744 Page 9
There is no evidence of record to indicate 1) that King's
cDNA sequence would be successfully expressed in E. coli or
2) that the encoded polypeptide would exhibit HGPRT activity
upon successful expression. Without further evidence, a
person having ordinary skill in the art might have found it
obvious to try expressing the King cDNA in E. coli to see if
any resulting protein exhibited HGPRT activity, but this is
not the standard under 35 U.S.C. § 103. E.g., In re Geiger,
815 F.2d 686, 688, 2 USPQ2d 1276, 1278 (Fed. Cir. 1987).
King, in explaining how codon usage problems may hamper
the study of P. falciparum HGPRT, discourages the selection of
E. coli as a suitable host. King speculates that a preference
in P. falciparum for TTA as a codon for leucine expression
could be a problem in hosts that rarely use the TTA codon for
leucine. King reports that human $-globin genes never use,
and highly expressed E. coli genes rarely use, the TTA codon
for leucine (King at 10478-10479). The prior art references
must be considered in their entirety, including portions that
would lead away from the claimed invention. W.L. Gore &
Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1548,
220 USPQ 303, 309 (Fed. Cir. 1983). A person having ordinary
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