Appeal No. 1995-4867
Application 07/993,482
the present invention in the specification of this application. As set forth above, one
embodiment involves an expression cassette where the polypeptide product is secreted
into the periplasmic space of the host cell. Another embodiment is where the polypeptide
product is secreted into the culture medium. Claim 31 is directed to the latter
embodiment. In other words, claim 31 is not inclusive of any expression cassette which
composes the DNA segments set forth in the body of the claim. Rather, claim 31 is
inclusive of only those expression cassettes having the required DNA segments which
allow for the “secretion of a disulfide bond-containing polypeptide in a biologically active,
mature form from an E. coli host cell into the culture medium.” That language describes a
property of the claimed compound and must be given effect in determining the patentability
of the claim.
2. Prima facie obviousness
With this claim interpretation in mind, the examiner's case of prima facie
obviousness quickly falls apart. One way of defining prima facie obviousness is where the
prior art relied upon contains a “detailed enabling methodology for practicing the claimed
invention, a suggestion to modify the prior art to practice the claimed invention, and
evidence suggesting that it would be successful.” In re O'Farrell, 853 F.2d 894, 902, 7
USPQ2d 1673, 1680 (Fed. Cir. 1988). Here, the examiner apparently was successful in
locating prior art which describes each of the DNA segments required by claim 31 on
5
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007