Appeal No. 95-2052
Application 07/620,939
amino acid 1 to 382. On this record, however, the examiner has not established how a person having
ordinary skill would have been led from "here to there", i.e., from a portion of the diphtheria toxin
extending from amino acid 1 to 382 (Youle) to "a
diphtheria toxin (DT) portion that consists of the first 388 amino acids of DT" recited in independent
claim 8.
In resolving the question of obviousness, we must consider the claimed subject matter as a
whole. 35 U.S.C. § 103. Here, the claimed subject matter includes the limitation of a diphtheria toxin
(DT) portion that consists of the first 388 amino acids of DT. The examiner has not established how
the cited prior art, relied on in the statement of rejection, would have led a person having ordinary skill
to a fusion protein containing that limitation. In this regard, the reference to "variant forms" of DT
(Examiner's Answer, page 5, line 2) does not provide an adequate factual foundation to support the
rejection. Simply stated, the examiner has not established that the claimed subject matter as a whole,
including the limitation of a diphtheria toxin (DT) portion that consists of the first 388 amino acids of
DT, is unpatentable over the cited prior art.
For these reasons, we conclude that the examiner has not established a prima facie case of
obviousness of claims 8, 10, 14 and 15. Accordingly, we find in unnecessary to discuss the Pastan
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