Appeal No. 2001-0766 Page 8
Application No. 08/483,941
Borrelli, or Germann and Moolten. The examiner has not established that the
cited prior art would have led a person having ordinary skill to apply the fusion
techniques described by Germann to the negative selectable genes disclosed in
the remaining references. A review of appellant=s specification and claims makes
it clear that the prior art could be modified in the manner proposed by the
examiner. However, “[t]he mere fact that the prior art could be so modified would
not have made the modification obvious unless the prior art suggested the
desirability of the modification." In re Mills, 916 F.2d 680, 682, 16 USPQ2d 1430,
1432 (Fed. Cir. 1990); In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127
(Fed. Cir. 1984).
For these reasons, we conclude that the examiner has not established a
prima facie case of obviousness of claims 1-6, 11, 16, 26 and 36, within the
meaning of 35 U.S.C. ' 103. We find it unnecessary to discuss the Lupton
declaration, filed under the provisions of 37 CFR ' 1.132, relied on by appellant
as rebutting any such prima facie case.
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