Appeal No. 1995-2772
Application 08/001,063
host cell. However, we find that the examiner is confusing the level of skill in the art with the
teachings of the prior art. In re Kratz, 592 F.2d 1169, 1175, 201 USPQ 71, 76 (CCPA
1979)(“[T]here is a difference between somehow substituting skill in the art for statutory
prior art, as the PTO attempts to do here, and using that skill to interpret the prior art”).
That is, although numerous facts were known in the art about biotin biosynthesis, as
discussed above, a critical fact the examiner has overlooked is that the function of the E.
coli bioH gene product in the biosynthetic pathway was not known at the time the invention
was made. Specification, para. bridging pp. 2-3; Fisher, col. 3, lines 9-14; O’Regan, p.
8004, lines 1-3. For example, O’Regan discloses
The exact nature of the early steps of the biotin biosynthetic pathway
of E. coli remains a mystery. Both the bioH and bioC gene products
have been shown to be implicated in these early steps but their
precise function is unknown.
Thus, while the disclosure of the complete nucleotide sequence of the E. coli bioH gene by
O’Regan might have made the transformation of a host cell with the gene and its
expression therein enticing to those of ordinary skill in the art “to try,” in this case, this is not
sufficient to establish a prima facie case of obviousness. In re Eli Lily & 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
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