Ex parte RAIKHEL et al.

Board of Patent Appeals and Interferences

Jul 16, 1998

07888367 - (D) (B.P.A.I. Jul. 16, 1998)

Application for patent filed May 26, 1992. According to applicants, 1
this application is a divisional of Application 07/587,071, filed September
24, 1990, now U.S. Patent 5,187,262, patented February 16, 1993.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte NATASHA V. RAIKHEL, WILLEM F. BROEKAERT,
NAM-HAI CHUA and ANIL KUSH
____________
Appeal No. 94-2232
Application 07/888,3671
____________
HEARING: December 4, 1996
____________
Before WILLIAM F. SMITH, GRON, and WALTZ, Administrative
Patent Judges.
GRON, Administrative Patent Judge.
DECISION ON APPEAL UNDER 35 U.S.C. § 134
1. Introduction
This is an appeal from an examiner’s rejections of Claims
7-11, all claims pending in this application. Claims 7-11
stand rejected under 35 U.S.C. § 103 over the combined
Appeal No. 94-2232
Application 07/888,367
As evidence in support of this rejection, the examiner cites the2
following references (Examiner’s Answer (Ans.), pp. 3-4):
Alberts, B., et al., Molecular Biology of the Cell, Garland Publishing, Inc.,
N.Y., pp. 185-196 (1983);
Safford et al., “Plastid-Localized Seed Acyl-Carrier Protein of Brassica napus is
Encoded by a Distinct, Nuclear Multigene Family,” Eur. J. Biochem., Vol. 174, pp.
287-295 (1988);
Back et al., “Isolation of cDNA Clones Coding for Spinach Nitrite Reductase:
Complete Sequence and Nitrate Induction,” Mol. Gen. Genet., Vol. 212, pp. 20-26
(1988);
Van der Plas et al., “The Gene for the Precursor of Plastocyanin from the
Cyanobacterium Anabaena sp. PCC 7937: Isolation, Sequence and Regulation,”
Mol. Microbiol., Vol. 3, No. 3, pp. 275-284 (1989).
2
teachings of Walujono et al. (Walujono), “Amino Acid Sequence
of Hevein,” Proceedings of the International Rubber
Conference, Vol. 2, Rubber Research Institute Malaysia, KuaLa
Lumpur, pp. 518-531 (1975), Broekaert, “Chitinases and Chitin-
Binding Lectins in Plants: A Biochemical and Physiological
Study of Their Role in the Natural Protection of Plants
Against Fungi,” Dissertationes de Agricultura,
Doctoraatsproefschrift Nr. 167 aan de Faculteit der
Landbouwwetenschappen van de K. U. Leuven, pp. II-IV (Abs.)
and 73-84 (Ch. 7)(September 1988), Weissman et al. (Weissman),
U.S. 4,394,443, patented July 19, 1983, and White et al.
(White), U.S. 4,677,054, patented June 30, 1987. Claims 7-112
Appeal No. 94-2232
Application 07/888,367
While appellants have not objected to the examiner’s citation of “other”
references in support of the rejection under section 103, we are mindful of the
following statement in In re Hoch, 428 F.2d 1341, 1342 n.3, 166 USPQ 406, 407 n.3
(CCPA 1970):
Where a reference is relied on to support a rejection,
whether or not in a “minor capacity,” there would appear
to be no excuse for not positively including the reference
in the statement of the rejection.
3
also stand rejected under 35 U.S.C. § 102(f) over and 35
U.S.C. § 103 in view of subject matter appellants claim which
is prior art under 35 U.S.C. § 102(f) as evidenced by the co-
authorship of later-published Broekaert et al. (Lee I),
“Wound-Induced Accumulation of mRNA Containing a Hevein
Sequence in Laticifers of Rubber
Tree (Hevea brasiliensis),” Proc. Natl. Acad. Sci. USA, Vol.
87, pp. 7633-7637 (October 1990), and Lee et al. (Lee II),
“Co- and Post-Translational Processing of the Hevein
Preproprotein of Latex of the Rubber Tree (Hevea
brasiliensis), J. Biol. Chem., Vol. 266, No. 24, pp. 15944-
15948 (August 25, 1991). Claims 7 and 8 read:
7. A method for detecting the presence of hevein
peptide in a plant material which comprises:
(a) providing a selected part of the plant material
for detection;
(b) isolating RNA from the plant material; and
Appeal No. 94-2232
Application 07/888,367
4
(c) providing the RNA with a labeled cDNA so that
the RNA binds to the cDNA when there is homology and the
bound labeled DNA is detected, wherein the cDNA is derived
from
E. coli ATCC 68363, and has an open reading frame of 204
amino acids which detects the presence of the hevein
peptide
sequence encoded by the RNA.
8. A method for detecting the presence of hevein
peptide sequences in a plant material which comprises:
(a) providing a selected part of the plant material
for detection;
(b) isolating RNA from the plant material; and
(c) probing the RNA with a labeled cDNA so that the
RNA binds to the cDNA where there is homology and the
bound labeled DNA is then detected, wherein the cDNA is
derived from the cDNA shown in Figure 2 which detects the
presence of the hevein peptide sequence encoded by the
RNA.
2. Claim interpretation
We have considered this appeal with Appeal No. 94-2156
(Application 07/888,366, filed May 26, 1992, as a divisional
of Application 07/587,071, now U.S. 5,187,262, also the parent
of this application). Appeal No. 94-2156 is an appeal of this
same examiner’s rejections of claims drawn to a cDNA molecule,
HEV1, which (1) corresponds to the DNA sequence of Figure 2 as
carried in E. coli ATCC 68363 which encodes a protein, or (2)
Appeal No. 94-2232
Application 07/888,367
The examiner’s Response to argument on pages 8-13 of the3
Examiner’s Answer (Ans.) entered in this appeal is essentially the
same as the Response to argument on pages 8-13 of the Examiner’s
Answer entered in Application 07/888,366, Appeal No. 94-2156.
5
encodes a protein corresponding to the 204 amino acid sequence
in Figure 2, under 35 U.S.C. § 103 in view of the combined
teachings of Walujono, Broekaert, and Weissman and 35 U.S.C. §
102(f)/103 in light of Lee I and Lee II.
The examiner appears to have rejected the claims in this
case based on a presumption that the presently claimed3
methods of detecting the presence of a hevein peptide and
hevein peptide sequences in plant material are peptide
detection methods which are distinct from the methods
described by White only in the utilization of the cDNA, HEV1,
claimed in copending Application 07/888,366, Appeal No. 94-
2156. However, as we read the claims on appeal, the herein
claimed methods of detecting hevein peptide and hevein peptide
sequences in plant material utilize (1) cDNA which “is derived
from E. coli ATCC 68363, and has a open reading frame of 204
amino acids which detects the presence of the hevein peptide
sequence encoded by the RNA” (Claim 7) or (2) cDNA which “is
derived from the cDNA shown in Figure 2 which detects the
Appeal No. 94-2232
Application 07/888,367
6
presence of the hevein peptide sequence encoded by the RNA”
(Claim 8). In our view, the cDNA utilized in the methods of
the presently appealed claims differs in scope from HEV1. The
questions to be answered for both sets of claims are (1)
whether the scope of the cDNA employed in the methods of (a)
Claims 7 and 9(7) and (b) Claims 8, 10(8) and 11(8) are so
indefinite as to prevent this panel from comparing the claimed
subject matter to the prior art teaching and from rendering a
decision as to their patentability under 35 U.S.C. § 103, and
(2) whether the ratio-nale which supports our holding with
regard to the patentability of Claims 3 and 4 in Appeal No.
94-2156 is equally applicable to resolve the patentability of
the subject matter here claimed.
It is evident to this panel that the cDNA utilized in the
method of Claims 7 and 9(7) here on appeal is sufficiently
defined to allow this panel to compare cDNA which is “derived
from E. coli ATCC 68363, and has an open reading frame of 204
amino acids which detects the presence of the hevein peptide
sequence encoded by the RNA” to cDNA which persons having
ordinary skill in the art, considering the combined teachings
Appeal No. 94-2232
Application 07/888,367
7
of Walujono, Broekaert and Weissman, reasonably could have
expected to isolate and successfully use to detect hevein
peptide sequences. However, based on the record before us, we
are unable to determine the scope of cDNA utilized in the
methods of Claims 8, 10(8), and 11(8). The phrase which is
not definite is the phrase “derived from the cDNA shown in
Figure 2" in Claim 8. The specification proffers no help or
guidance in interpreting the size and/or sequence of a cDNA
segment derived from the cDNA shown in Figure 2 which could
detect the presence of the hevein peptide sequence encoded by
the RNA. In fact, neither the examiner nor appellants appear
to have considered the question
in the slightest.
An interpretation of the size and sequence of the
“derived” cDNA segment is particularly important in this case
because Walujono discloses a 43 amino acid sequence for mature
hevein, and the record is not clear whether cDNA which encodes
mature hevein reads on a cDNA “derived from the cDNA shown in
Figure 2 which detects the presence of the hevein peptide
sequence encoded by the RNA,” cDNA capable of being utilized
in the method of Claim 8.
Appeal No. 94-2232
Application 07/888,367
8
In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA
1971) teaches:
[T]he claims must be analyzed first in order to determine
exactly what subject matter they encompass. . . .
This first inquiry therefore is merely to determine
whether the claims do, in fact, set out and circumscribe
a particular area with a reasonable degree of precision
and particularity. It is here where the definiteness of
the language employed must be analyzed--not in a vacuum,
but always in light of the teachings of the prior art and
of the particular application disclosure as it would be
interpreted by one possessing the ordinary level of skill
in the pertinent art.
Only after ascertaining exactly what subject matter is being
claimed can one (1) inquire as to the novelty of the claimed
subject matter, (2) determine whether the description of the
invention in the specification would have enabled persons
skilled in the art to make and use the full scope of the
subject matter claimed, and (3) assess the obviousness of the
claimed subject matter at the time the invention was made. In
re Wilder,
429 F.2d 447, 166 USPQ 545 (CCPA 1970) states at 450, 166 USPQ
at 548, “Once having ascertained exactly what subject matter
is being claimed, the next inquiry must be into whether such
subject matter is novel.” In re Geerdes, 491 F.2d 1260, 180
Appeal No. 94-2232
Application 07/888,367
9
USPQ 789, (CCPA 1974) clarifies at 491 F.2d at 1262, 180 USPQ
at 791, “Before considering the rejections under 35 U.S.C. 103
and 112, we must first decide whether the claims include
within their scope the presence of recognized . . . agents.”
So instructed, we should not and accordingly will not
review the appealed rejection of Claims 8, 10(8), and 11(8)
under
35 U.S.C. § 103 in view of the teachings of Walujono,
Broekaert, Weissman and White until the examiner first
ascertains exactly what is being claimed, i.e., the full scope
of cDNA “derived from the cDNA shown in Figure 2 which detects
the presence of the hevein peptide sequence encoded by the
RNA” (Claim 8). Claim interpretation is a matter of law, and
the Board certainly has authority to interpret the meaning of
the terms in appellants’ claims in the first instance.
However, we hesitate to do so in this case. Where, as here,
the technology to which the subject matter relates is complex
and the level of skill in the art is high, it is most
desirable for the Board to review an examiner’s rejections of
claims in light of a record with preliminary claim
interpretation, comprehensive findings, consideration of all
Appeal No. 94-2232
Application 07/888,367
10
the issues and applicable precedent, and at least minimal
prosecution overall. Our review of the merits of the
rejections of Claims 8, 10(8) and 11(8) on appeal based on the
present record would be premature and resemble an academic
rather than a judicial endeavor. Moreover, the scope of cDNA
encompassed by the phrase “derived from the cDNA shown in
Figure 2" (Claim 8) may render the holding and opinion
expressed in In re Bell, 991 F.2d 781, 782, 26 USPQ2d 1529,
1531 (Fed. Cir. 1993) far more relevant to this appeal than
they were to co-pending Appeal No. 94-2156. If material to
the issues of this appeal, the views expressed in Bell should
of necessity be considered in light of newly decided In re
Deuel, 51 F.3d 1552, 34 USPQ2d 1210 (Fed. Cir. 1995) and
Ex parte Goldgaber, 41 USPQ2d 1172 (Bd. Pat. App. & Int.
1995).
Accordingly, we vacate the examiner’s rejection of Claims
8, 10(8), and 11(8) under 35 U.S.C. § 103 in view of the
teachings of Walujono, Broekaert, Weissman and White and
remand the case to the examiner to ascertain exactly what the
phrase “wherein the cDNA is derived from the cDNA shown in
Figure 2 which detects the presence of the hevein peptide
Appeal No. 94-2232
Application 07/888,367
11
sequence encoded by the RNA” in Claim 8 means. Thereafter,
the examiner should again determine, consistent with our
decisions in Appeal No. 94-2156, this appeal,
In re Bell, supra, In re Deuel, supra, and Ex parte Goldgaber,
supra, whether the patentability of Claims 8, 10(8), and 11(8)
under 35 U.S.C. § 103 is an issue.
3. Discussion
A. Obviousness in view of Walujono, Broekaert &
Weissman
The issues on appeal with regard to Claims 7 and 9(7) are
whether cDNA which is “derived from E. coli ATCC 68363, and
has an open reading frame of 204 amino acids which detects the
presence of the hevein peptide sequence encoded by the RNA”
would have been obvious to a person having ordinary skill in
the art in view of (1) prior art teaching of the 43 amino acid
sequence for mature hevein, including an internal Trp-Gly-Trp-
Cys sequence (Walujono, p. 519), (2) recognition in the art
that hevein has antifungal properties and may be useful for
treating human beings infected by fungus (Broekaert), (3)
Weissman’s description of the information and means required
to enable persons skilled in the art to successfully probe a
Appeal No. 94-2232
Application 07/888,367
12
DNA library for and isolate cDNA which encodes a target
protein without undue experimentation, and (4) White’s
disclosure of a method of detecting the presence of peptides
which, but for the use of cDNA which encodes the peptide
hevein, is generally the same as the method appellants claim.
White’s teaching and its relevance to peptide detection
methods of the type appellants claim, does not appear to be
disputed. Rather, as in Appeal No. 94-2156, appellants stress
the significant differences between cDNA which encodes mature
hevein with a 43 amino acid sequence which was known in the
art and the claimed cDNA with an open reading frame of 204
amino acids. Appellants here again argue that the combined
teachings of Walujono, Broekaert, and Weissman would not have
motivated a person having ordinary skill in the art to probe
for and isolate cDNA which encodes a peptide with 204 amino
acids. Appellants emphasize that they are using cDNA which
encodes a peptide having 204 amino acids, not cDNA which
encodes the 43 amino acid sequence of mature hevein. We find
that the differences between the structures of cDNA which
encodes mature hevein and cDNA which encodes a 204 amino acid
hevein precursor strongly support the patentability of the
Appeal No. 94-2232
Application 07/888,367
13
subject matter claimed in this case. Accordingly, we reverse
the examiner’s rejection of Claims 7 and 9(7) under 35 U.S.C.
§ 103 in view of the combined teachings of Walujono,
Broekaert, Weissman, and White.
In re Dow Chemical Co., 837 F.2d 469, 473, 5 USPQ2d 1529,
1531 (Fed. Cir. 1988) instructs:
The consistent criterion for determination
of obviousness is whether the prior art would have
suggested to one of ordinary skill in the art that
this process should be carried out and would have
a reasonable likelihood of success, viewed in light
of the prior art. . . . Both the suggestion and the
expectation of success must be founded in the prior
art, not in the applicant’s disclosure.
At 837 F.2d at 473, 5 USPQ2d at 1532, the court explains:
There must be a reason or suggestion in the art for
selecting the procedure used, other than the knowledge
learned from the applicant’s disclosure.
Here, as in Dow Chemical Co., 837 F.2d at 473, 5 USPQ2d at
1532, “[o]f the many scientific publications cited . . . none
suggests that any process could be used successfully . . . to
produce this product having the desired properties.”
The prior art cited in this case reasonably brings the
claimed subject matter to no higher than the “obvious-to-try”
Appeal No. 94-2232
Application 07/888,367
14
level. See In re Eli Lilly & Co., 902 F.2d 943, 945, 14
USPQ2d 1741, 1743 (Fed. Cir. 1990):
An “obvious-to-try” situation exists when a
general disclosure may pique the scientist’s curiosity,
such that further investigation might be done as a result
of the disclosure, but the disclosure itself does not
contain a sufficient teaching of how to obtain the
desired
result, or that the claimed result would be obtained if
certain directions were pursued. See generally In re
O’Farrell, 853 F.2d 894, 903, 7 USPQ2d 1673, 1681 (Fed.
Cir. 1988)(defining obvious-to-try as when prior art
gives
“only general guidance as to the particular form of the
claimed invention or how to achieve it”).
Here, the prior art provides no information whatsoever as to
the “particular form of the claimed invention or how to
achieve it.” Id. Moreover, In re O’Farrell confirms at 853
F.2d at 903,
7 USPQ2d at 1681, that the evidence the examiner relies upon
in this case presents a classic “obvious-to-try” situation
which is not the standard for unpatentability under 35 U.S.C.
§ 103:
[W]hat would have been ‘obvious to try’ would have been
to . . . try each of numerous possible choices until
one possibly arrived at a successful result, where the
prior art gave . . . no direction as to which of many
possible choices is likely to be successful.
Appeal No. 94-2232
Application 07/888,367
Neither the examiner nor appellants have addressed or4
considered the holdings and opinions in In re Deuel, 51 F.3d 1552,
34 USPQ2d 1210 (Fed. Cir. 1995) and Ex parte Goldgaber, 41 USPQ2d
1172 (Bd. Pat. App. & Int. 1995). Moreover, resolution of the
issues in this case with regard to the patentability of Claims 7
and 9(7) does not necessitate our consideration of the holdings
and opinions in those cases relative to In re Bell, supra, with in
depth comparison of the underlying facts in this case to the facts
therein. It should suffice to say that the decision in this case
is dictated by the fact unique to this case that the claimed
method uses cDNA which encodes a sequence of 204 amino acids, not
the 43 amino acid sequence the prior art discloses. See In re
Ochiai, 71 F.3d 1565,
1572, 37 USPQ2d 1127, 1133 (Fed. Cir. 1995)(Obviousness deter-
15
Compare the examiner’s responses (Examiner’s Answer
(Ans.),
pp. 8-13) to appellants’ argument that the prior art presents
persons having ordinary skill in the art with no more than an
invitation to experiment, an argument that refers to In re
Bell,
991 F.2d 781, 26 USPQ2d 1529 (Fed. Cir. 1993), especially the
court’s discussion of Weissman’s method of probing for and
isolating cDNA encoding proteins with known amino acid
sequences and the relevance of methods of isolating cDNA using
probes based on the amino acid structure of the protein it
encodes to the patentability of claims drawn to the cDNA
itself. For example, the examiner emphasizes that the4
Appeal No. 94-2232
Application 07/888,367
minations require a fact-specific analysis of the claims and prior
art. Per se rules of obviousness are legally incorrect.)
16
peptide having 204 amino acids encoded by the cDNA utilized in
the method of Claim 7 has the same -Trp-Gly-Trp-Cys- internal
sequence (Trp has a unique codon) as the known 43 amino acid
sequence of mature hevein (Ans.,
pp. 9-11), yet the fact that appellants’ claimed method
utilizes cDNA which encodes a 204 amino acid precursor is not
considered to be a material distinction. We disagree.
The examiner states (Ans., pp. 11-13, bridging para.
(3)):
While applicants urge that the actual gene
expression product and encoding cDNA sequence are
larger than the known hevein protein having only
43 amino acids, one of ordinary skill in the art
in carrying out the method of Weissman . . . would
have inherently or inevitably obtained the full-length
cDNA sequence corresponding to the gene encoding the
protein which included these 43 amino acids . . . .
In our view, the examiner erroneously equates the requisite
“likelihood of success” to inevitability. Rather, for
obviousness under 35 U.S.C. § 103, persons having ordinary
skill in the art would have had to have a reasonable
Appeal No. 94-2232
Application 07/888,367
17
expectation of success in view of the cited prior art. See In
re O’Farrell,
853 F.2d at 903, 7 USPQ2d at 1681 (“For obviousness under §
103, all that is required is a reasonable expectation of
success.”)
The examiner predicts (Ans., p. 12, l. 12-17):
Thus, one of ordinary skill in the art would have kept
probing until encountering the intact terminator (i.e.,
including polyadenylation signal) and such a sequence
would have inherently encoded the rest of the naturally
encoded previously unknown polypeptide portion C-terminal
to the N-terminal 43 amino acid sequence which was known.
The position taken by the examiner falls from its own weight.
Since the examiner admits that the C-terminal position of the
protein in question was “unknown” at the time of the present
invention, it is not clear why one of ordinary skill in the
art would have had reason to look for it, let alone a
reasonable expectation of finding it. This is not obviousness
within the meaning of 35 U.S.C. § 103. This is surprise which
is more indicative of patentability.
B. Rejections under 35 U.S.C. § 102(f) and § 103
But for the fact that the claimed subject matter in In re
Katz, 687 F.2d 450, 215 USPQ 14 (CCPA 1982), was rejected
Appeal No. 94-2232
Application 07/888,367
18
under 35 U.S.C. § 102(g) over prior publications whose
authorship included a student not named as a coinventor of the
subject matter claimed in the patent application and the
claims in this application stand rejected under 35 U.S.C. §
102(f) over subsequent publications whose authorship includes
a student, Lee, not named as a coinventor of the subject
matter claimed in this patent application, the evidence in the
two cases is virtually identical. This case similarly
contains a Declaration Under
37 CFR § 1.132 (attachment to appellants’ Supplemental Brief
Under 37 CFR § 1.193(b)) by a coinventor, Natasha V. Raikhel,
which states in paragraph (1) thereof that “Dr. Lee’s contri-
bution was as a student at Michigan State University and he
performed routine experimentation under her supervision.”
That the holding in Katz applies to rejections under
35 U.S.C. § 102(f) is evident from Ex parte Kroger, 218 USPQ
370 (Bd. App. 1982). In the case then before the Board
“various declarations were submitted by Kroger and Rod to the
effect that Kroger and Rod are inventors and that Knaster
merely carried out assignments and worked under the
Appeal No. 94-2232
Application 07/888,367
19
supervision and direction of Kroger.” Id. at 371. The Board
stated at 371-372:
If this were all the evidence in this case, then
we would be constrained to agree that Kroger et al are
the inventors and that Knaster is not a coinventor.
The difference in Kroger was that the record included
additional evidence which showed that (1) Knaster refused to
sign a
declaration that he was not a coinventor, and (2) Knaster
wrote
a letter to the PTO declaring himself to be a coinventor of
the invention claimed.
In this case, we have only an examiner’s speculation
that Lee must be a coinventor of the subject matter claimed in
this application because of the repeated use of the pronoun
“we” in the later published papers which Lee co-authored and
coinventor Raikhel’s reference to “Dr. Lee” in her declaration
(Supplemental Examiner’s Answer, pp.2-4). However, the
examiner may recall that the PTO was expressly cautioned
against just this type of speculation in In re Katz, 687 F.2d
at 455-56, 215 USPQ at 18 (emphasis added):
Appeal No. 94-2232
Application 07/888,367
20
[W]e hold that authorship of an article by itself does
not
raise a presumption of inventorship with respect to the
subject matter disclosed in the article. Thus, co-
authors
may not be presumed to be coinventors merely from the
fact
of co-authorship. . . .
. . . [When there was] ambiguity created by the
printed publication . . . [i]t was incumbent, therefore,
on appellant to provide a satisfactory showing which would
lead
to a reasonable conclusion that he is the sole inventor.
. . . . .
In the declaration, appellant provides the
explanation
that the co-authors of the publication . . . “were
students
working under the direction and supervision of the
inventor . . . .” This statement . . . provides a clear
alternative
conclusion . . . . On the record here, the board should
not have engaged in further speculation as to whether
appellant’s view was shared by . . . [the] co-authors but
rather should have accepted that . . . [the co-authors]
were
acting in the capacity indicated, that is, students
working
under the direction and supervision of appellant. From
such
a relationship, joint inventorship cannot be inferred in
the
face of sworn statements to the contrary.
In light of Raikhel’s declaration, the examiner erred as a
matter of law in presuming that the co-authorship of the Lee
Appeal No. 94-2232
Application 07/888,367
21
I and Lee II publications raises the presumption that Lee is
a coinventor of the subject matter appellants claimed.
Accordingly, we reverse the examiner’s rejections of Claims
7-11 under 35 U.S.C. § 102(f) and under 35 U.S.C. § 103 in
view of subject matter the examiner deemed to be prior art
under
35 U.S.C. § 102(f).
4. Conclusion
We vacate the examiner’s rejection of Claims 8, 10(8),
and 11(8) under 35 U.S.C. § 103 in view of the combined
teachings of Walujono, Broekaert, Weissman and White.
We reverse the examiner’s rejection of Claims 7 and 9(7)
under 35 U.S.C. § 103 in view of the combined teachings of
Walujono, Broekaert, Weissman and White.
We reverse the examiner’s rejection of Claims 7-11 under
35 U.S.C. § 102(f).
We reverse the examiner’s rejection of Claims 7-11 under
Appeal No. 94-2232
Application 07/888,367
22
35 U.S.C. § 103 in view of prior art available under 35 U.S.C.
§ 102(f).
We remand this application to the examiner to ascertain
the scope of the phrase “wherein the cDNA is derived from the
cDNA shown in Figure 2 which detects the presence of the
hevein peptide sequence encoded by the RNA” in Claim 8 and
determine whether the patentability of Claims 8, 10(8), and
11(8) under
35 U.S.C. § 103 in view of the combined teachings of Walujono,
Broekaert, Weissman and White remains an issue in light of
this decision, the decision in Appeal No. 94-2156 (attached),
In re Bell, supra, In re Deuel, supra, and Ex parte Goldgaber,
supra.
This application, by virtue of its “special” status,
requires an immediate action. Manual of Patent Examining
Procedure § 708.01(d)(6th ed., Jan. 1995). It is important
that the Board be informed promptly of any action affecting
the appeal in this case.
Appeal No. 94-2232
Application 07/888,367
23
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
VACATED-IN-PART; REVERSED-IN-PART; and REMANDED
WILLIAM F. SMITH )
Administrative Patent Judge )
)
)
TEDDY S. GRON ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
THOMAS A. WALTZ )
Administrative Patent Judge )

Appeal No. 94-2232
Application 07/888,367
24
Ian C. McLeod
2190 Commons Parkway
Okemos, MI 48864
Appeal No. 94-2232
Application 07/888,367
25
TSG/cam