Appeal No. 1999-1313
Application 08/448,097
provide protection against bacteremia, and that epitopes of P4 were not detectable at the
cell surface. Therefore the reference provides inadequate reason, suggestion, or
motivation to choose this particular protein for further work, and we agree with appellants
that one of ordinary skill would have been dissuaded from attempting to obtain the gene
encoding protein “e”. The examiner further argues, in rebuttal to the arguments advanced in
the brief, that “the nucleic acids encoding claimed proteins or fragments can be used as
probes in hybridization assays,” (Examiner’s Answer, page 5). However, the examiner
does not point to any reason, suggestion, or motivation, stemming from the prior art,which
would have led a person having ordinary skill to select the P4/”e” protein coding sequence
for this purpose.
We conclude that the examiner has not met the initial burden of establishing
unpatentability. The examiner’s decision, rejecting claims 28-30, 38-46, 81-83, and 88
under 35 U.S.C. § 103, is reversed.
No time period for taking any subsequent action in connection with this appeal may
be extended under 37 CFR § 1.136(a).
REVERSED
)
Sherman D. Winters )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
William F. Smith )
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