Appeal No. 1995-3249
Application No. 07/670,644
herbicides) were known in the art at the time of the invention. Neither reference discloses
transgenic plants expressing catechol dioxygenase. Perkins II (another “tertiary
reference”) does not relate to transgenic plants. Olsen, Zukowski and Frantz (“the
secondary references”) establish that aromatic ring-opening genes from Pseudomonas
were widely known, and genes encoding various catechol dioxygenases had been
characterized and cloned for use in a wide range of host organisms.
The examiner concludes that it would have been obvious for “one of ordinary skill in
the art to modify the primary reference with the teachings of the secondary and tertiary
references in order to make transgenic plants that tolerated and degraded toxic
compounds with a reasonable degree of success.” See the Answer, page 9.
We have no doubt that the prior art could be modified in the manner proposed by
the examiner, but the fact that the prior art could be so modified would not have made the
modification obvious unless the prior art suggested the desirability of the modification. In
re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). Here, we find no
reason stemming from the prior art which would have led a person having ordinary skill to
the claimed invention. In our judgment, the only reason or suggestion to combine the
references in the manner proposed by the examiner comes from appellants’ specification.
Moreover, as acknowledged by the examiner in the statement of the rejection,
obviousness under 35 U.S.C. § 103 requires a reasonable expectation of success.
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