Appeal No. 1996-1042
Application No. 07/810,138
Furthermore, having carefully reviewed the record, we
believe that the examiner has engaged in a hindsight
reconstruction of the claimed invention, using the applicants'
specification as a template and selecting elements from the
references to fill the gaps. This is impermissible. See In
re Gorman, 933 F.2d 982, 987, 18 USPQ2d 1885, 1888 (Fed. Cir.
1991). In our judgment, the examiner relies on hindsight in
arguing that a person having ordinary skill would have been
led from "here to there," i.e., from the asporogenous strains
of Bacillus subtilis disclosed in the prior art to the
asporogenous strain Bacillus subtilis SMS275 recited in the
appealed claims. The latter strain has a frequency of
reversion to spore formers of less than 10 ; plasmid-8
stability; and five specifically recited genetic markers.
The rejections of claims 9 through 15 under 35 U.S.C.
§ 103 are reversed.
CONCLUSION
In conclusion, for the reasons set forth in the body of
this opinion, we do not sustain the rejection of claims 9
through 13 under 35 U.S.C. § 112, first paragraph, as based on
-8-
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007