Appeal No. 2006-3250 Page 10
Application No. 10/468,562
pantothenic acid. Answer, bridging paragraph, pages 4-5.6 As we understand
the Examiner’s assertion, a person of ordinary skill in the art would have found it
obvious to try various techniques to increase the expression of the relevant
genes in the hope to produce at least 2 g/l of pantothenic acid in a fermentation
media lacking β-alanine.7 We note, however, that “obvious to try” is not the
standard of obviousness under 35 U.S.C. § 103. In re O’Farrell, 858 F.2d 894,
903, 7 USPQ2d 1673, 1680 (Fed. Cir. 1988).8 Accordingly, we are not
persuaded by the Examiner’s supposition.
While the Examiner relies on Hoffman-La Roche to teach the use of
calcium chloride in the production of calcium D-pantothenate, the reference fails
to make up for the deficiencies in the combination of Hikichi and Baigori
discussed above.
As for Binder, the Examiner finds (Answer, bridging sentence, pages 5-6)
Binder discloses that in a method of producing D-pantothenic acid from bacteria
or yeast, the calcium or magnesium salts of D-pantothenate are produced at the
end of the culture phase by adjusting the pH and “adding a solution or
6 See also Answer, page 11, wherein the Examiner asserts “it would have been obvious to one of
ordinary skill in the art at the time that the invention was made to engineer the bacterium by up-
regulating all four of . . . [panB, panC, panD and panC] genes in the synthesis pathway in order to
produce as much pantothenic acid as possible when the bacterium is grown in culture.” There is,
however, no evidence on this record that the fermentation of B. subtilis in the absence of
β-alanine will result in the production of 2 g/l of D-pantothenic acid.
7 See Brief, page 8, wherein Appellants assert:
The mere fact that Baigori et al. characterizes some genes which are involved in
the synthesis of D-pantothenic acid does not suggest or imply that a deregulation
of such genes provides that the resulting organism would form at least 2 g/l of
salts of D-pantothenic acid by fermentation in a culture medium even when no
free β-alanine and/or β-alanine salt is fed to the culture medium. . . .
8 See also Reply Brief, page 2, wherein Appellants “assert that the Examiner’s rejection appears
to be based on an ‘obvious to try’ standard . . . .”
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