Appeal No. 95-0083
Application 07/711,556
On consideration of the record, we reverse the double patenting rejection of
claims 43, 45 through 49 and 52. However, we affirm the double patenting rejection of
claims 54 and 56 through 58. We reverse the rejection of claims 43, 45, 46, 49, 52, 54
and 56 through 58 under 35 U.S.C. § 103.
DOUBLE PATENTING
In rejecting the appealed claims for obviousness-type double patenting, the
examiner refers to claims 1 and 6 through 12 of U.S. Patent No. 4,859,596. In our
judgment, however, the examiner has not adequately explained how claims 43, 45
through 49, and 52 in this application define merely an obvious variation of the
invention set forth in claims 1 and 6 through 12 of the '596 patent. See In re Vogel 422
F.2d 438, 441, 164 USPQ 619, 622 (CCPA 1970). Claims 43, 45 through 49 and 52
define a method for producing a polypeptide of interest in a Kluyveromyces host cell,
where the polypeptide of interest is expressed in and secreted by the host cell. In view
of this limitation, that the polypeptide is secreted by the host cell, we find that the
examiner has not established a prima facie case of obviousness-type double patenting.
As correctly pointed out by the examiner, claims 1 and 6 through 12 of the '596 patent
define a transformed Kluyveromyces cell in essentially the same terms found in
appealed claims 54 and 56 through 58. That, however, is not sufficient to support a
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