Appeal No. 94-1911
Application 07/662,735
competitive environment, (2) without undue experimentation, and
(3) with reasonable expectation of successfully degrading the
target organic material. We note that the Forman factors2
considered by the examiner at pages 9-11 of the Examiner’s Answer
relate to the facility with which heterologous gene expression
in any microorganism would have been enabled by appellants’
specification. In our view, the examiner’s focus on the question
whether the kind and amount of direction and guidance provided in
appellants’ specification would have enabled persons skilled in
the art to perform the full scope of heterologous gene expression
contemplated by the claims in any microorganism is misplaced.
The claims on appeal are not drawn to methods for recombinantly
modifying microorganisms. Rather, the recombinantly modified
microorganisms to which appellants’ claims refer appear to be
either old or within the artisan’s skill to obtain without undue
experimentation. Appellants expressly state (Reply Brief, pp. 4-
5, bridging para. and p. 5, first full para.; citations omitted):
Once disclosed, Appellants’ invention is so logical
and simple that one has the tendency to say, “Why didn’t
I think of that?” Given a natural site contaminated with
some organic material, one need only start with an
organism which uses a growth substrate not utilized by
the indigenous microorganism in that environment, what
one might call an “uncommon substate”, and insert, by
well-known recombinant techniques, genes producing an
2 Ex parte Forman, 230 USPQ 546, 547 (Bd. Pat. App. & Int.
1986).
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