Appeal No. 94-1911
Application 07/662,735
enzyme which degrades that organic material.
That recombinant technology is not arcane. It is
routine and is practiced by undergraduate students at
the University where one of the co-inventors teaches.
Appellants do not now and never have attempted to claim
some recombinant technique which forecloses all research
in this area. They never have asserted to have found a
new technique for altering microorganisms. They do not
claim some novel DNA, a vector, or any process for
manipulating the genetic makeup of a cell. They claim
only a method of degrading organic material.
It is axiomatic that patent specifications need not teach,
and preferably omit, what is known in the art. Hybritech Inc. v.
Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384, 231 USPQ 81, 94
(Fed. Cir. 1986); In re Wands, 858 F.2d 731, 735, 8 USPQ2d 1400,
1402 (Fed. Cir. 1988). Appellants have asked the examiner to
reconsider the patentability of the claims on appeal with the
focal issue being whether persons skilled in the art would have
been able to make and use the claimed method in light of the
description in the specification and the knowledge in the art.
While the claimed method utilizes recombinantly modified
microorganisms which function in the specific manner indicated,
appellants presume that the public has the recombinantly modified
microorganisms in their possession or sufficient knowledge to
make the recombinantly modified microorganisms without undue
experimentation. The examiner clearly has not shown that persons
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