Appeal No. 1995-2772
Application 08/001,063
transform a host cell and to express therein the E. coli bioH gene and why said persons
would have had a reasonable “expectation of success” that the resultant host cell would
produce more biotin than a non-transformed host cell. The examiner concludes that it
would have been obvious to express the
E. coli bioH gene taught by O’Regan in a host cell in order to increase the yield of biotin
synthesis because “the bioH gene was the only remaining gene known to be present in the
chromosome of E. coli that was identified by all working in the field as contributing an
enzymatic activity to the biosynthesis of biotin.” Answer, p. 12. The examiner contends
that “the biotin synthesis method of Fisher would clearly have provided one of ordinary skill
in the art at the time the invention was made with the means for increasing the gene
dosage of the only gene not present in the transcriptional units used by Fisher.” Id., p. 13.
The examiner summarizes his position by stating that “In short, placing the bioH gene in an
expression context equivalent to that of Fisher was the only available improvement on the
method of Fisher once its coding sequence was disclosed by O’Regan et al.” [Emphasis
added]. Id.
In our view, the examiner has presented a classic “obvious to try” argument as to
why the claimed invention would have been obvious to those of ordinary skill in the art.
Here, the examiner recognizes that the nucleotide sequence of the E. coli bioH gene was
known in the art and, therefore, the next logical research step was to express the gene in a
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