Appeal No. 1995-2518
Application 07/895,581
The examiner concludes that (Answer, page 4):
[o]ne of ordinary skill in the art would have found it obvious to modify the teachings
in the Bussey et al. reference by applying the teachings of the Achstetter et al. reference to
construct a mutant yeast which was deficient in the production of ysc" and one or more of
yscA, yscB, yscY and yscS proteolytic activities such as by gene disruption disclosed in
the Bussey et al. reference or any other art recognized routine technique with the
expectation of having a strain of yeast with decreased protein degradation of at least 40-
60% as taught in the reference.
Both Hinnen and Meyhack are relied upon as teaching the transformation of
yeast with hybrid vectors for the expression of heterologous proteins of the type
designated in the claims. (Answer, page 5).
It is the initial burden of the patent examiner to establish that claims presented in an
application for patent are unpatentable. In re Oetiker, 977 F.2d 1443, 1446, 24 USPQ2d
1443, 1445 (Fed. Cir. 1992). We have carefully considered the evidence and discussion
in support of the rejection presented by the examiner. However, we feel that a fair
evaluation of the references, applicants' specification and consideration of the claimed
subject matter as a whole, dictates a conclusion that the construction of the claimed
subject matter from the prior art teachings is not suggested by the record before us. To
establish a prima facie case of obviousness, there must be more than the demonstrated
existence of all of the components. There must be some reason, suggestion, or
motivation found in the prior art whereby a person of ordinary skill in the field of the
invention would make the substitutions required. That knowledge can not come from the
applicants' invention itself. Diversitech Corp. v. Century Steps, Inc., 850 F.2d 675,
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