Appeal No. 1997-3461
Application No. 07/806,932
“artisan would have found it prima facie obvious to have screened a cDNA library made
from human breast cell carcinoma mRNA with the cDNA encoding murine nm23 of the
'662 patent to permit the characterization of human nm23 at the molecular level.” See
e.g., Answer, pages 4 and 6.
Appellants respond to the examiner’s rejection by stating that “[t]he existence of
two human nm23 genes which encode two different human nm23 proteins is not taught
or suggested by the cited references.” See, Brief, page 3. In the Brief, bridging
paragraph of pages 3-4, appellants point out that “[a]s taught at page 3 of the
specification, these are ‘two different and distinct human genes … which encode … two
different and distinct nm23 proteins.” Because the cited references do not teach or
suggest the existence of two human nm23 genes, they cannot render the instant claims
obvious.”
In response to appellants’ arguments the examiner argues that in contrast to the
appellants’ specification, claims and argument, two human nm23 genes do not exist.
The examiner reasons that “an nm23 gene, by definition, is differentially expressed in
tumor cells of differing metastatic potential4.” See, Answer, page 7. Based on this
definition, the examiner further reasons that the identification of a second nm23 gene is
“clearly an erroneous conclusion.” See, Answer, page 7. The examiner concludes at
page 8 of the Answer that “nm23-H2 is not differentially expressed in tumor cells of
4 We recognize that the examiner failed to identify any support for this definition of “an
nm23 gene.”
4
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