Appeal No. 2001-1436 Page 14
Application No. 08/422,612
The instant claims, by contrast, do not require transduction of a signal by
the receptor; all the claims require is that the receptor bind its ligand. Thus, the
instant claims do not depend on interaction between the mammalian G protein-
coupled receptor and the yeast G protein α subunit. In the examples disclosed in
specification, binding of ligand to receptor is measured directly, using a labeled
ligand. See, e.g., pages 16-17 and 23-24. Thus, the specification discloses a
method of assaying for ligand-binding by the heterologous receptor, even if the
receptor does not transduce a signal. The examiner has not shown that undue
experimentation would have been required to use yeast cells expressing a
mammalian G protein-coupled receptor in the disclosed assay method. The
rejection for nonenablement is reversed.
As recognized by the examiner, our reversal of the nonenablement
rejection mandates reversal of the rejections based on King. See the Examiner’s
Answer, page 3:
The pending rejection for anticipation and obviousness under 35
U.S.C. § 102(e) based upon the King et al. patent is not a separate
issue because it is based solely upon the enablement rejection of
record. If the instant application is not enabled for the now claimed
invention then it can not [sic], by law, receive benefit under 35
U.S.C. § 120 from any prior application and, therefore, any
intervening art must be applied where appropriate. If the
enablement rejection is withdrawn [sic, reversed] then the rejection
for anticipation and obviousness based upon the intervening King
et al. reference must also be withdrawn [sic, reversed].
The rejections over King are reversed.
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