Appeal No. 2001-0766 Page 7
Application No. 08/483,941
selectable genes, disclosed in the secondary references and recited in the
appealed claims.
The examiner argues (Examiner=s Answer, page 11) that the claim term
Anegative selectable gene@ encompasses any gene which is not positively
selectable, and therefore encompasses the nonselectable genes disclosed by
Germann as suitable for inclusion within a fusion construct. However, that
argument is not supported by the specification=s definition of the term Anegative
selectable gene,@ or by Germann. As discussed above, Germann discloses that
fusion constructs are advantageous because they 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). In contrast, on page 18, lines 13-16, appellant=s specification defines
Anegative selectable gene@ as Aany gene which, upon being transduced into a
host cell, expresses a phenotype permitting negative selection (i.e.[,] elimination)
of stable transductants.@ Thus, in contrast to the genes disclosed in Germann,
the claimed genes, and those disclosed in the references applied in combination
with Germann, all have a selectable phenotype associated with their expression.
The examiner=s position to the contrary, notwithstanding, Germann’s disclosure
of Anonselectable genes@ does not encompass the negative selectable genes
recited in the claims, or disclosed by the references applied in combination with
Germann.
On this record, the examiner has not established adequate reason,
suggestion or motivation stemming from the prior art which would have led a
person having ordinary skill to combine Germann and Borrelli, or Germann and
Moolten, in the manner proposed. Nor do the remaining references relied on by
the examiner cure the deficiencies of the proposed combination of Germann and
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