Appeal No. 2001-1436 Page 12
Application No. 08/422,612
not have expected an intact, mammalian G protein-coupled receptor gene to be
useful in Dull’s method, and would not have been motivated to combine the two.
“It is insufficient to establish obviousness that the separate elements of the
invention existed in the prior art, absent some teaching or suggestion, in the prior
art, to combine the elements.” Arkie Lures Inc. v. Gene Larew Tackle Inc., 119
F.3d 953, 957-58, 43 USPQ2d 1294, 1297 (Fed. Cir. 1997). The references
cited by the examiner clearly show that genes encoding mammalian G protein-
coupled receptors were known in the art, as was expression of heterologous
genes in yeast cells. However, “all of the relevant teachings of the cited
references must be considered in determining what they fairly teach to one
having ordinary skill in the art. The relevant portions of a reference include not
only those teachings which would suggest particular aspects of an invention to
one having ordinary skill in the art, but also those teachings which would lead
such a person away from the claimed invention.” In re Mercier, 515 F.2d 1161,
1165-66, 185 USPQ 774, 778 (CCPA 1975) (emphasis in original, citations
omitted). We agree with Appellants that when the cited references are
considered in their entirety, they would not have suggested the claimed invention
to those of skill in the art. The rejection is therefore reversed.
As noted above, the other rejections in the Examiner’s Answer are related
to the obviousness rejection discussed above. Specifically, the examiner
rejected all of the claims as nonenabled,
based solely on Appellant’s [sic] extensive arguments that the prior
art of record did not provide an artisan with a reasonable
expectation that a mammalian G protein-coupled receptor could be
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