Appeal No. 1999-1367
Application 08/453,998
reasonable expectation of success. The Evans disclosure makes no clear link between
yeast and the expression control method using hormones and hormone receptor proteins.
Even if one skilled in the art were to view the mention of yeast as a suggestion to try
expressing a protein in yeast under the control of a hormone-responsive element and a
hormone receptor, neither Evans nor Cushing (nor any of the additional references)
provides a reasonable expectation of success for the method at the time the invention was
made. None of the references cited in the rejection indicate contemporary recognition in
the art for cross-functionality in yeast for higher eukaryotic receptor proteins such as the
receptor proteins recited in appellants’ claims. Cushing discloses an endogenous
estrogen-binding protein in yeast and an endogenous estradiol-like product. The
teachings of Cushing do not lead to a reasonable expectation of success, as it was
unknown if the yeast estrogen-binding protein functioned in the same manner as the
mammalian estrogen receptor. Indeed, one of ordinary skill in the art might have
reasonably expected the endogenous estrogen-binding protein in yeast to compete with or
interfere with the binding of estrogen to the recombinant estrogen receptor, or expected
the endogenous estradiol-like compound to act as an undesired inducer. Therefore, we
see the invention as obvious to try at best, in view of the combined teachings of the
references. That is not a proper standard of obviousness. In re O’Farrell, 853 F. 2d 894,
904, 7 USPQ2d 1673, 1681(Fed. Cir. 1988).
REVERSED
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