Appeal No. 2004-2134 Page 7
Application No. 09/425,075
generally available to one of ordinary skill in the art would lead that individual to
combine the relevant teachings of the references.’” In re Fritch, 972 F.2d 1260,
1265, 23 USPQ2d 1780, 1783 (Fed. Cir. 1992) (citation omitted). An adequate
showing of motivation to combine requires “evidence that ‘a skilled artisan,
confronted with the same problems as the inventor and with no knowledge of the
claimed invention, would select the elements from the cited prior art references
for combination in the manner claimed.’” Ecolochem, Inc. v. Southern Calif.
Edison Co., 227 F.3d 1361, 1375, 56 USPQ2d 1065, 1076 (Fed. Cir. 2000). In
our view, the examiner has met that burden, and the rejection is affirmed.
Appellants argue that there is “no motivation to make and use dual
expression cassettes for antibody production in Pichia.” Appeal Brief, page 8.
According to appellants, Robinson, which was relied upon for its teaching of a
dual cassette vector, does not suggest the use of the dual cassette vector in
Pichia, and does not even mention Pichia. See id. at 8-9.
Appellants contend that “the Office has erroneously interpreted the word
‘yeast’ as used in the context of Robinson to mean a genus of microorganisms
that encompassed Pichia.” Id. at 9. Relying on the declaration of Dr. James
Trager, appellants assert that yeast as used in Robinson refers only to S.
cerevisiae, and not to Pichia, and there is no teaching, suggestion or motivation
to use dual expression cassette vectors in Pichia. See id. at 9-10.
We agree with appellants that Robinson does not teach the use of a dual
cassette vector to produce antibodies in Pichia, and that the reference does not
mention the use of Pichia for the production of antibodies. Appellants, however,
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