Appeal No. 95-0083
Application 07/711,556
SECTION 103
We have carefully considered the record, but do not find a coherent explanation
why claims 43, 45, 46, 49, 52, 54 and 56 through 58 in this application are unpatentable
over the cited prior art. Rather, the examiner refers us to Paper No. 6 in parent
application Serial No. 07/480,102, mailed November 29, 1990, where the combined
disclosures of Hollenberg (European Patent Application 096 430), Das, Kurjan, and
Hitzeman were applied against a different set of claims (Examiner's Answer, page 3,
lines 20 through 23; page 5, lines 1 through 10). Simply put, the examiner does not
explain why the claims in this application are unpatentable over the cited prior art.
The Board of Patent Appeals and Interferences shall, on written appeal of an
applicant, review adverse decisions of examiners upon applications for patents. 35
U.S.C. § 7 (b). In other words, the Board serves as an appellate tribunal and reviews
adverse decisions of examiners on the written record. Here, the examiner has not
provided us with a position susceptible to meaningful review.
Further, appellants rely on the following objective evidence of non-obviousness:
(1) Dixon et al., "Purification and Properties of an Inducible $-Galactosidase Isolated
from the Yeast Kluyveromyces lactis", Journal of Bacteriology, vol. 137, pages 51-61
(1979), attached as appendix C to the Appeal Brief; (2) International Publication
WO 83/04418 published December 22, 1983, copies of the front page and introduction
attached as appendix D to the appeal Brief; and (3) Dr. Van Den Berg's Declaration
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