Appeal 2007-1069
Application 10/334,990
content of the prior art and the level of skill in the pertinent art. Graham v.
John Deere Co., 383 U.S. 1, 13-14, 148 USPQ 459, 465 (1966). The
Examiner finds that Wagner teaches inserting a gene coding for a
carbamoylase, hydantoinase, and/or hydantoin racemase, but does not teach
“a microorganism transformed with a plasmid containing DNA encoding a
carbamoylase, hydantoinase, and a hydantoin racemase, wherein said DNAs
are expressed at rates which result in reduced accumulation of intermediates
in the conversion of 5-monosubstituted hydantoins to L- or D-amino acids”
as required by claim 17 (Answer 10). However, the Examiner concludes
that the claimed expression method would have been obvious because
D- and L- amino acids are widely used biochemicals, therefore
methods of making such amino acids are highly desirable. Also,
one of skill in the art is motivated to express these genes at rates
which would avoid accumulation of intermediates because
accumulation of intermediates can potentially reduce yield and
is not efficient.
(Answer 11).
The Examiner bears the initial burden of showing unpatentability.
See, e.g., In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed.
Cir. 1993). “[R]ejections on obviousness grounds cannot be sustained by
mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed.
Cir. 2006) (quoted in KSR Int’l Co. v. Teleflex Inc., 127 S.Ct 1727, ___, 82
USPQ2d 1385, 1396 (2007)). Common knowledge and common sense are a
part of this reasoning. See DyStar Textilfarben GmbH & Co. Deutschland
KG v. C.H. Patrick Co., 464 F.3d 1356, 1367, 80 USPQ2d 1641, 1650 (Fed.
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