Appeal No. 2002-1367 Page 10
Application No. 08/981,964
GRIMES, Administrative Patent Judge, dissenting.
The issue in this case—whether a preponderance of the evidence
supports the examiner’s rejection—is a close one, and certainly, the examiner’s
position would have been stronger if she had cited evidence showing that most
yeast genes are regulated at the level of transcription, not translation.
Nevertheless, I believe that a preponderance of the evidence supports the
rejection, and I would affirm it.
The claims on appeal define a method for identifying inhibitors of sterol
biosynthesis, by contacting a test compound with a host cell having within it a
reporter gene linked to “a DNA sequence which controls expression of a fungal
acetoacetyl CoA thiolase gene,” and monitoring the expression of the reporter
gene as a measure of sterol synthesis inhibition. See claim 1.
The examiner’s primary reference, Kirsch, discloses a similar screening
method, but using a reporter gene under the control of the lanosterol 14-α-
demethylase gene rather than the acetoacetyl-CoA thiolase (ACoAT) gene. The
other references cited by the examiner disclose the fungal ACoAT gene and
surrounding sequences (Hiser and Dequin) and disclose that ACoAT is regulated
in response to changes in ergosterol levels (Servouse).
As I understand their arguments, Appellants do not dispute that the
elements needed to practice the claimed method (reporter genes, ACoAT gene
sequences, and sterol biosynthesis inhibition assays) were known in the art. The
critical issue, then, is whether a person of ordinary skill in the art would have
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