Appeal No. 2001-0766 Page 6
Application No. 08/483,941
Here, the motivation asserted by the examiner for combining references is
Germann=s disclosure that fusing a positive selectable gene to an unselectable
gene ensures expression of the unselectable gene. Extrapolating from that
disclosure, the examiner argues that Germann would provide incentive for fusing
a positive selectable gene to a negative selectable gene, such as disclosed in the
remaining references, to ensure expression of the negative selectable gene.
However, Moolten is the only reference relied on disclosing a vector with both a
dominant positive selectable gene and a negative selectable gene; and Moolten
does not disclose any problem expressing these genes, even though each is
under the control of a different promoter. Moolten is not faced with the problem
addressed by Germann, and Moolten=s non-fusion vector does not suffer from
the disadvantages discussed by Germann with respect to gene expression.
Germann discloses preparing fusion proteins to ensure expression of
genes which Ahave no selectable phenotype associated with their expression@ or
genes which encode Aan unselected protein@ (page 7418, column 1, first full
paragraph of text). As stated by Germann, A[t]aken together the results indicate
that the human MDR1 gene may be used as a dominant selectable marker to
introduce nonselectable genes in the form of gene fusions into human cells@
(page 7424, column 1, first full paragraph, emphasis added). In contrast, all of
the claims on appeal require a negative selectable gene. Because Germann
discloses the advantages of fusion constructs only with respect to nonselectable
genes, the artisan of ordinary skill would not have been led by Germann to
prepare a fusion protein containing a negative selectable marker of the type
disclosed in the other references. We find nothing in Germann leading the
artisan of ordinary skill to apply Germann=s fusion construct technique to negative
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