Appeal No. 1996-1916
Application 07/912,122
specific deletion in the transmembrane region, as well as portions of the extracellular and
intracellular sequences” (Id., page 3). The examiner concedes that Lemischka “does not
disclose the particularly claimed sequence,” but does not provide reasons why one of
ordinary skill in the art would have found it obvious to modify the prior art sequence to
arrive at the specifically claimed cDNA (Examiner’s Answer, page 6).
35 U.S.C. § 103 requires that obviousness be determined on the basis of the
claimed “subject matter as a whole.” Where, as here, the determination of obviousness is
based on less than the entire claimed subject matter, the examiner’s conclusion of
obviousness cannot be sustained. Accordingly, we find that the examiner’s initial
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