Appeal No. 94-1573 Paper No. 24
Application No. 07/552,744 Page 10
skill in the art reading King's specific teachings would have
been led away from the selection of E. coli as a host for
expression of King's cDNA because of potential codon usage
problems regardless of what the other more general references
might have suggested. E.g. Tec Air, Inc. v. Denso
Manufacturing Michigan, Inc., ___ F.3d ___, ___, 52 USPQ2d
1294, 1298 (Fed. Cir. 1999) (apparently inoperative
combination teaches away). Since there is no motivation to
modify King and since King discourages the selection of E.
coli as a host for expression of the described cDNA, the § 103
rejection over the combination of King and the other
references is reversed.
DECISION
We affirm the § 102(a) rejection of claims 2-4 and 6 over
Vasanthakumar I. We reverse the § 102(b) rejection of
claims 2-4 over King and the § 103 rejection of claims 1-7
over King and the other references. The period for taking any
subsequent action in connection with this appeal will be
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