Appeal No. 1995-4717
Application 07/876,288
Warmerdam, 33 F.3d 1354, 1361, 31 USPQ2d 1754, 1759 (Fed. Cir. 1994). In claim 2,
the protein represented by His serves as the carrier protein as part of the fusion protein.
n
For any value of "n", one skilled in this art could readily determine whether the substance
represented by "His " will serve as a carrier protein and thus does or doe not falls within
n
the scope of the claims. That the phrase appears in a Markush group does not serve as a
basis to evaluate it in a different manner. We therefore reverse the rejection of claims 2
through 7 under 35 U.S.C. § 112, second paragraph.
The rejections under 35 U.S.C. § 103
Claims 1 through 5 and 24:
Claims 1 through 5 and 24 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Devlin in view of Cronan, Scott, Maina and Plückthun.
In describing the reliance on Devlin, the examiner states (Answer, paragraph
bridging pages 6-7):
Devlin et al. disclose the production of random peptide libraries in both
8gt11 and in filamentous phage (see e.g. page 404, first column, second
paragraph, lines 3-9 and lines 15-19). These random, semi-representative
libraries comprised 15 residue peptides made by transforming host cells
with vectors containing random peptide coding sequences and culturing the
resultant transformed cells.
The examiner acknowledges (Answer, page 7) that Devlin does not disclose the
use of vectors encoding tripartite fusion proteins in the construction of the disclosed library,
but relies upon Cronan (Answer, page 7) as disclosing a tripartite fusion protein vector
which has a cleavage site, exemplified by Factor Xa, which results in expression of the
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