Appeal No. 2004-2134 Page 10
Application No. 09/425,075
knowledge, there are no reports of proteins greater than 117 kDa being
expressed in P. pastoris.’” Id. at 12 (emphasis in original) (quoting Pinnell, page
601). Appellants assert that statement teaches away from the claimed invention,
as antibodies are generally larger than 117 kDa. See id.
Second, appellants rely upon Holliger for teaching that: “‘Because
bicistronic expression works only poorly in Pichia (unlike E. coli), it is preferable
to use single-chain Ab formats. Two chain Ab formats require that the two chains
be cloned and transformed separately.’” Appeal Brief, page 13 (emphasis in
original) (quoting Hollinger, page 351). Dr. Trager also reviewed Pinnell and
Hollinger, and appellants cite paragraph 22 of his declaration to support their
proposition that the references would lead the ordinary artisan away from the
claimed invention.
Again, we do not find appellants arguments to be convincing. With
respect to the statement of Pinnell that “[t]he size of the protein to be expressed
may also be limiting because to our knowledge, there are no reports of proteins
greater than 117 kDa being expressed in P. pastoris,” as noted by the examiner,
the Invitrogen catalog teaches the expression of a wide variety of proteins that
have been expressed in Pichia, such as GP-120, see Examiner’s Answer, page
9, which appellants do not dispute is larger than 117 kDa.
With respect to the statement of Hollinger, appellants cannot rely on
post-filing art references to show what one skilled in the art would know at the
time of filing. The state of the art at the filing date of the application is used to
determine whether a particular disclosure is enabling as of the filing date.
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007