Appeal No. 1999-1676
Application No. 08/452,228
salt thereof. The protein of SEQ ID NO: 1 is generic to both the bovine and the
porcine obesity protein. Eli Lilly and Company, the real party in interest, is common
to both of these appeals. In addition, Zhang is implicated in each appeal, and the
issues presented for review are similar.
THE REJECTION UNDER 35 U.S.C. § 103:
Claims 1 and 2:
According to the examiner (Answer, pages 3-4) Zhang:
teach mouse obese gene (Fig. 4) and [the] use [of] this DNA to
acquire the human homologue of this gene (page 429, col. 2,
para. 2 and Fig. 6a) via Southern blot hybridization of the
mouse obese gene to a human adipose tissue cDNA library
(page 429, col. 2, para. 2). The mouse and human obese
genes were found to be highly homologous and encoded
proteins that were 84% identical (page 431, col. 1 top and Fig.
6b). Additionally, Southern blot hybridization of genomic DNA
of rat, human, rabbit, vole, cat, cow, sheep, pig, chicken, eel,
and Drosophila with the mouse obese gene resulted in
detectable hybridization signals in each animal genomic DNA,
demonstrating the evolutionary conservation of the gene
across species (Fig. 6a and legend).
The examiner reasons (Answer, page 4) that given the teachings of Zhang:
one would reasonably expect that Rhesus would also have this obese
gene and that it could be readily isolated on gel via southern blot
hybridization of mouse obese gene to Rhesus genomic DNA. This
genomic DNA would encode the protein sequence set forth in [c]laim
1… and be the cDNA set forth in [c]laim 2.
According to the examiner (Answer, pages 4-5) “[b]ecause one skilled in the
art knows from the teachings of Zhang et al. what the mouse obese gene looks like
and that it is conserved across many species, one skilled in the art can envision or
extrapolate to what the Rhesus obese gene cDNA would look like.”
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