Appeal No. 2001-0288 Page 11
Application No. 08/277,031
make the specific combination recited in claim 9.” For the reasons set forth for
claim 8, supra, we are not persuaded by appellants’ argument.
Second, appellants argue (Brief, bridging paragraph, pages 15-16) with
reference to In re Vaeck, 947 F.2d 488, 20 USPQ2d 1438 (Fed. Cir. 1991) and
Ex parte Ochiai, 24 USPQ2d 1265 (Bd. Pat. App. & Int. 1992) that “the
expression of proteins in heterologous systems, as exemplified by the present
instance of expression of a human protein in a yeast cell, is one considered by
the USPTO to be inherently unpredictable.” Therefore, “[a]ppellants submit
[Brief, page 16] that the inherent unpredictability of heterologous gene
expression makes the invention set forth in claim 9 unobvious over the cited
references.”
We cannot agree with appellants’ argument. As explained by the
examiner (Answer, page 18) “this proposition … ignore[s] the clear difference
between the pertinent facts in Vaeck and the facts at issue in the instant
application.” Furthermore to the extent that appellants would argue that the cited
case law stands for the proposition that a per se rule exits, we point out that,
since the decisions in Bell and Deuel, our appellate reviewing court has made it
clear that there are no per se rules of obviousness or nonobviousness. In re
Ochiai, 71 F.3d 1565, 1572, 37 USPQ2d 1127, 1133 (Fed. Cir. 1995) (“reliance
on per se rules of obviousness is legally incorrect.”) Accord, In re Brouwer, 77
F.3d 422, 425, 37 USPQ2d 1663, 1666 (Fed. Cir. 1996).
On reflection, we find no error in the examiner’s rejection. Accordingly, we
affirm the rejection of claim 9 under 35 U.S.C. § 103 as being unpatentable over
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