Appeal No. 93-2460
Application No. 07/590,647
necessarily indicate that present variants will have the same
enzyme specificity as the prior art variants. In our view, since
there are amino acid substitutions in two separate, conserved
regions of the EPSPS enzyme, it is reasonable to expect the K of
m
the claimed variant to differ from that of the prior art. We
point out that inherency must be based on inevitability, not
speculation. In re Oelrich, 666 F.2d 578, 581-582, 212 USPQ 323,
326 (CCPA 1981). Since the examiner has not given any reasons as
to why the plants comprising the instant EPSPS enzyme variants
would be expected to have the same glyphosate-resistant phenotype
as the plants taught by Comai and Fillatti, we find that the
examiner’s conclusion is based on speculation.
As to the obviousness of the present variants over the prior
art, we agree with the appellants that the applied prior art
fails to provide any teaching or suggestion of the claimed
mutations. Given that there are a myriad of possible mutations
within the EPSPS enzyme, there must have been some suggestion in
the applied prior art to make the claimed variants in order to
establish a prima facie case of obviousness. The examiner has
failed to provide any evidence of such a suggestion either in
applied prior art or on the basis of knowledge generally
2222
Page: Previous 15 16 17 18 19 20 21 22 23 24 25 26 27 28 29 Next
Last modified: November 3, 2007