Appeal No. 1997-0838
Application 08/235,238
importantly, “"-chymotrypsin which is required by the claims, is not mentioned at all.” Brief,
page 15.
The examiner addresses this last issue in the statement of the rejection only to the
extent that he concludes that “it would have been obvious to use any known and
conventional protein denaturing agent or proteolytic enzyme (protease) for their known and
expected results.” Examiner’s Answer, page 8.
In our judgment, the combined disclosures of the cited references are insufficient to
support a conclusion of obviousness for claims requiring "-chymotrypsin (especially as
Selmeci shows that two other proteases, trypsin and subtilisin, affect the LDH isozyme
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differently). 35 U.S.C. § 103 requires that obviousness be determined based on 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 is legally
unsound and cannot be sustained. On this record, we reverse Rejection I under 35 U.S.C.
§ 103.3
Enablement
Claims 10 and 11 stand rejected under 35 U.S.C. § 112, first paragraph, as based
on a non-enabling disclosure. These claims require “preserving more than 50% of LDH1
activity” during the process of the invention. According to the examiner:
3Having determined that a prima facie case of obviousness has not been
established, we find it unnecessary to comment on appellants’ arguments regarding
unexpected results attributable to the present invention.
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