Appeal No. 1995-4867
Application 07/993,482
examiner has discounted or dismissed this language in considering the patentability of
claim 31. As stated in the paragraph bridging pages 6-7 of the examiner's answer, “[f]irst,
it is important to note that appellants are claiming a compound (i.e., an expression
cassette), not a method of secreting a polypeptide. Such an intended use carries no
patentable weight.” We disagree with the examiner that this language recites only an
intended use and carries “no patentable weight.”
It is axiomatic the claims are read in light of the supporting specification. In re Zletz,
893 F.2d 319, 321-22, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989); In re Moore,
439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971). As set forth at page 3, lines 7-
13 of the specification, the expression cassettes of the present invention allow for
secretion of a polypeptide. As explained at page 18, lines 1-11 of the specification:
[w]here the product is retained in the host cell, the cells are harvested,
lysed and the product isolated and purified by extraction, precipitation,
chromatography, electrophoresis, and the like. Where the product is
secreted into the periplasmic space, the cells are harvested and the product
is liberated by destruction of the cell wall, e.g., by hypotonic shock and the
like. Where the product is secreted into the medium, the nutrient medium
may be collected and the product isolated by conventional means, for
example, affinity chromatography.”
As recognized by the examiner, the subject matter before us in this appeal is a
compound. As stated in In re Papesch, 315 F.2d 381, 391, 137 USPQ 43, 51 (CCPA
1963), “From the standpoint of the patent law, a compound and all of its properties are
inseparable; they are one and the same.” Appellants describe a number embodiments of
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