Appeal No. 2001-0288 Page 10
Application No. 08/277,031
expression of human P450 3A4 in human cells … [and] [t]he Wolf reference
discloses generically that mammalian P450 enzymes can be fused to yeast
reductase and the fusion can be expressed in yeast cells.” Nevertheless,
appellants argue that since none of the references “specifically exemplifies” the
claimed fusion, there is “no motivation provided in the cited prior art to produce”
the fusion. We note that appellants fail to identify any authority upon which to
support this assertion.
In our opinion, appellants’ argument lacks merit, “[t]he test for
obviousness is not express suggestion of the claimed invention in any or all of
the references but rather what the references taken collectively would suggest to
those of ordinary skill in the art presumed to be familiar with them.” In re
Rosselet, 347 F.2d, 847, 851,146 USPQ 183,186 (CCPA 1965). Stated
differently, a specific exemplification is not necessary. Therefore, on this record,
we find no error in the examiner’s rejection. Accordingly, we affirm the rejection
of claim 8 under 35 U.S.C. § 103 as being unpatentable over Crespi, Sakaki,
Yasumori ‘89 and Paolini in view of Wolf, Yasumori ‘87 and Yabusaki
Claim 9:
According to appellants (Brief, page 15) “[t]he invention recited in claim 9
[is drawn to] a yeast expression plasmid comprising DNA encoding a fusion
protein.” Appellants present two arguments in response to the examiner’s
rejection. First, relying on the same rationale asserted for claim 8, supra,
appellants argue (Brief, page 15), “the cited references provide no motivation to
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