Appeal No. 2001-1436 Page 13
Application No. 08/422,612
expressed in S. cerevisiae in combination with the Examiner’s
position that an artisan would not have expected the su[rp]rising
and unexpected results obtained by Appellant[s] in E. coli to be
predictive of prophetic results in the completely unrelated organism
S. cerevisiae.
Examiner’s Answer, pages 2-3 (emphasis in original).
We understand the examiner’s position to be based on Appellants’
arguments, presented earlier in prosecution but not repeated in the Appeal Brief,
that the prior art would not have provided a reasonable expectation of success.
As we understand it, the examiner’s reasoning is that the claims must be either
obvious or nonenabled: if Appellants are correct that the claims are nonobvious
(due to lack of expectation of success), then they are nonenabled because the
specification provides no guidance to supply the expectation allegedly missing
from the prior art.
We do not agree that our reversal of the obviousness rejection mandates
affirmance of the nonenablement rejection. The examiner’s obviousness
rejection is based on substituting DNA encoding an intact mammalian G protein-
coupled receptor into Dull’s assay system. Dull’s system relies on functional
transduction of a signal by the heterologous receptor to generate a positive
response in the assay. Thus, to be used in Dull’s system, a mammalian G
protein-coupled receptor would have to generate a signal – either dissociation of
the G protein or activation of the effector protein – in response to binding a
ligand. In view of Dietzel’s disclosure, however, a skilled artisan would not have
expected functional signal transduction by a mammalian G protein-coupled
receptor expressed in yeast cells.
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