Appeal No. 94-1484
Application 07/536,556
page 4 of the Appeal Brief (“the cited references do not disclose or suggest the strain
E. coli B”).
Where as here, the examiner’s patentability determination under 35 U.S.C.
§ 103 has been based on less than the “subject matter as a whole,” the rejection is
legally flawed and cannot be sustained. We recognize that the examiner belatedly
attempted to rectify this error at page 5 of the Examiner’s Answer where, in responding
to appellants’ arguments, the examiner stated that “Appellants have acknowledged,
and it has been argued by the examiner, that E. coli B strains . . . are known and
available to the public . . . .” We first note that the examiner has not relied upon any
evidence in stating the rejection in support of the statement. Second, assuming
arguendo, that E. coli B strains were known at the time of the present invention, that
knowledge does not necessarily mean that the use of those strains would have been
considered obvious by one of ordinary skill in the art in the manner required by the
claims on appeal.
The rejection under 35 U.S.C. § 103 is reversed.
Other Issues
As set forth above, our decision in this appeal has centered upon the failure of
the examiner to properly account for that portion of the claimed subject matter directed
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