Appeal No. 95-0448
Application 07/825,632
production from mutant bacteria, the examiner refers to
applicants’
construction of the xanthan-producing mutants in accordance
with the claims. For example, the following appears in the
Examiner’s Answer, page 8, lines 10-22:
In the present case, the property in question
is the presence in the Xanthomonas campestris
strain of inserted copies of the DNA which
directs xanthan gum synthesis, combined with
the fact that the wild type parent strain could
produce xanthan gum. Appellants further argue
that it could not have been known that the
genetic modification did not eliminate the
ability of the strain to produce xanthan gum.
However . . . one of ordinary skill would not
have had the expectation that said modification
would have eliminated xanthan gum production.
To the contrary, one of ordinary skill would have
expected higher production due to the rationale
in the art with which the recited strain was
designed.
Hindsight shall not form the basis of a conclusion of
obviousness under 35 U.S.C. § 103. “Both the suggestion and
the expectation of success must be founded in the prior art,
not in applicant’s disclosure.” In re Dow Chemical Co., 837
F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed. Cir. 1988). To the
extent that the examiner’s comments relate to the obviousness
of the strains required in claims 28 and 5, no supporting
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