Appeal No. 1995-2518
Application 07/895,581
skilled in the art would have been so motivated (Supplemental Answer, page 3):
[t]o further minimize the effects of inadvertent processing and maximize
heterologous protein production one of ordinary skill in the art would have found it obvious
to combine the teachings of Bussey et al. with that of Achstetter et al. . . .
However, the examiner does not indicate where in the prior art, relied upon, such a need is
suggested. Patentability should be based on a comparison of the claimed subject matter
and the prior art. It is the prior art which must provide some basis for combining the
relevant disclosures and it is improper for the examiner to substitute the skill in the art for
prior art, rather than using the skill in the art to interpret the prior art. In re Kratz, 592 F.2d
1169, 1175, 201 USPQ 71, 76 (CCPA 1979).
The remaining references, Hinnen, Meyhack, Strathern, and Kingsman, do not
provide the reason, suggestion or motivation determined to be missing and necessary to
support the combination of the disclosures of the previously discussed references.
Therefore, with regard to claims 51-61, it is our conclusion that the examiner has failed to
established a prima facie case of unpatentability of the claimed subject matter.
The rejections under 35 U.S.C. § 103 are reversed.
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