Appeal No. 1997-2122
Application 08/310,902
DISCUSSION
As seen, claim 3 is directed to a polypeptide which comprises the amino
acid sequence corresponding to the α- subunit of the human FcERI essentially
free of the β- and K-subunits of the human FcERI. The examiner relies upon
Kumar for its disclosure of a procedure for isolating the I-subunit of the rat
FcERI. The examiner relies upon Kishi for its disclosure of the human cell line
KU812. As set forth in the paragraph bridging pages 4-5 of the Examiner’s
Answer, the examiner’s position is that it would have been obvious to one of
ordinary skill in the art to have “isolated a human FcERI I-subunit like the rat
FcERI I-subunit of Kumar et al. by substituting the KU812 cells of Kishi… for the
rat basophils that were employed in the purification process of Kumar et al.”
In order for a claimed invention to be unpatentable under the statute, the
subject matter of that claim must have been obvious to a person of ordinary skill
in the art at the time of the invention under review. As is apparent, the
examiner’s theory of the case presupposes that at the time of the present
invention one of ordinary skill in the art understood that KU812 cells express the
human FcERI. Otherwise, why would one of ordinary skill in the art have the
needed reason, suggestion or motivation to combine the references? However,
in responding to appellants’ arguments at page 5 of the Examiner’s Answer, the
examiner states “it is conceded that this fact was not known prior to the making
3
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