Appeal No. 94-1709
Application 07/716,115
modification, nevertheless, at the present time, there are no
published accounts of this for potatoes (Shepard, page 211).
Obviousness under 35 U.S.C. § 103 requires a reasonable
expectation of success. Based on the foregoing discussion, we
conclude that (1) the examiner's reliance on Shepard is
misplaced; and (2) the prior art does not provide a sufficient
basis for the necessary predictability of success to here
sustain a rejection under 35 U.S.C. § 103.2
Further, the examiner states that "Cherry et al. teach
that tyrosine, a melanin precursor, is considered to be a
cause of blackspot in potatoes" and "[t]yrosine is taught by
Cherry to be the causative agent of blackspot." See the
Examiner's Answer, page 4. Again, the examiner does not
specify the particular portion or portions of Cherry which
contain that teaching. Apparently, the examiner refers to the
"Background of the Invention" section of Cherry, discussing
2We note in passing that the Shepard reference is cited
at page 24, last paragraph, of appellants' specification.
Another reference is cited in that same passage, namely,
Taylor et al., "[a] shoot induction procedure altered for
increased shoot efficiency of potato protoplast - derived
calli, Potato Research 31:651-658 (1988)." However, in
rejecting the appealed claims under 35 U.S.C. § 103, the
examiner does not rely on Taylor et al.
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