Appeal No. 2001-1148 Page 4
Application No. 09/114,552
Claim 11 is directed to a genetic knock-in primary mammalian adipocyte
isolated from a transgenic mouse. The claimed adipocyte is a progeny of a genetic
knock-in cell. The genetic knock-in cell is made by homologous recombination of a
native ob allele with a transgene; the transgene comprising a sequence encoding a
reporter flanked by flanking sequences and residing on a chromosome in the
transgenic mouse. According to the claimed invention, expression of the reporter is
under the control of native gene expression regulatory sequences of the native ob
allele and the flanking sequences effect, in conjunction with the cell, the homologous
recombination of the transgene with the native ob allele.
Examiner has applied Kress, Kitamoto, Sista, Tartaglia, Dubuc, Halaas,
Cusin, and Capecchi. The parties largely agree on what the references teach. In
fact, appellants’ (Brief, p. 6) state that “[a]pplicants readily acknowledge that all
pieces of their cells, animals and methods exist in the prior art. ” Accordingly, there
is no dispute that each and every element of the claimed invention is disclosed in
one or more of the cited references2 and therefore we need not determine whether
any particular element in the claims is taught in the prior art references. Since
“identification in the prior art of each individual part claimed is insufficient to defeat
patentability of the whole claimed invention,” In re Kotzab, 217 F. 3d 1365, 1369, 55
2 Appellants’ (Brief, p. 3) acknowledge that “[t]he Final Action aptly cites references that teach how
to make transgenic animals (Capecchi), how to perform replacement (Kitamoto) and insertional
(Kress) mutagenesis, the knowledge and importance of the ob gene (Dubuc, Halaas and Cusin),
how to screen for drugs using a transcriptional reporter assay (Sista), how to use genes
differentially expressed in obese mice (Tartaglia), and from all these pieces, constructs a
reasonable facsimile of the claimed invention.”
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