Appeal No. 95-2041
Application 07/814,220
which the examiner refers, notes the teaching in the
Chakrabartty that "a minimum of three repeats of the basic
sequence are required for ice suppression activity." Then in
the following sentence the inventors, not Chakrabartty,
conclude "Hence, larger molecules with a greater number of
repeating sequences which can form a larger amount of hydrogen
bonds should be more effective in preventing ice crystal
growth (emphasis added)." This sentence is not an admission
that the prior art had drawn the stated generic conclusion.
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 the applicant’s disclosure." In re Dow Chemical Co.,
837 F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed. Cir. 1988). The
prior art of record does not denominate the critical features
of appellants’ invention; i.e. genes and hosts corresponding
to the production of proteins containing the eight-repeat
sequences required by claims 17-20. As the Federal Circuit
stated in Sensonics, Inc. v. Aerosonic Corp., 81 F.3d 1566,
1570, 38 USPQ2d 1551, 1554 (Fed. Cir. 1996):
To draw on hindsight knowledge of the
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