Appeal No. 95-4520
Application 08/038,761
examiner does not allege that Kunkel teaches or suggests modifying a DNA sequence
coding for BPL in any manner or for any purpose.
In setting forth the rejection of claims 1 and 8 on pages 3 and 4 of the Examiner’s
Answer, the examiner states “it would have been an obvious modification to alter the
amino acid sequence derived from [the gene taught by Kusui] by site-directed
mutagenesis, as taught by Kunkel, to substitute amino acid residues by a known method to
produce a protein that has equivalent activity to the prior art protein.”
However, the examiner has begun to explain how the applied prior art supports his
conclusion that it would have been obvious “to produce a protein that has equivalent
activity to the prior art protein.” Neither Kusui or Kunkel teach or suggest modifying BPL in
any manner whatsoever, let alone a manner in which the insecticidal activity of the protein
is retained.
It appears to us that the examiner has viewed the prior art in light of appellants’
disclosure of the present invention. The examiner has not relied upon any prior art that
establishes that one of ordinary skill in the art would have reasonably expected prior to the
present invention that modifying BPL in the manner required by claimed invention would
have resulted in a protein retaining insecticidal activity. It is the prior art which must
suggest this reasonable expectation of success, not appellants’ success.
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