Appeal No. 1999-1313
Application 08/448,097
characterization of DNA from H. influenzae, and Maniatis as teaching routine procedures
of expressing proteins in host cells. The examiner states that
“One of ordinary skill in the art would have been motivated to make such DNAs
[encoding “e”] because of the unique properties of the Hemophilus influenza
proteins in that such proteins can be used as diagnostic markers and/or vaccine
candidates for infections caused by Hemophilus influenza, reagents to raise
antibodies for detection or diagnostic assays, and the technique of generating
recombinant proteins by expressing DNA would have allowed for the ability to
obtain large quantities of proteins.”
Examiner’s Answer, page 3.
Appellants do not dispute that Granoff teaches a purified protein P4, which is the
same as protein “e”. However, appellants argue that, due to improper purification methods,
Granoff was unable to obtain essentially purified protein “e” which would have utility in a
vaccine. Appellants further argue that a fair reading of Granoff would have led a person of
ordinary skill in the art to conclude that protein “e” (P4) was not a viable vaccine candidate,
and would have been dissuaded from attempting to obtain the gene encoding protein “e”.
We agree.
We find that Granoff does not provide adequate reason, suggestion, or motivation
to choose the P4 protein for cloning. Although a person having ordinary skill in the art
might be generally motivated to use H. influenzae proteins as diagnostic markers and/or
vaccine candidates, or as reagents to raise antibodies for detection or diagnostic assays,
nonetheless, Granoff does not provide adequate suggestion that the P4 protein would be
useful for these purposes. Granoff teaches that antisera to purified P4 protein does not
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