Appeal No. 1995-3249
Application No. 07/670,644
In re O’Farrell, 853 F.2d 894, 903-04, 7 USPQ2d 1673, 1681 (Fed. Cir. 1988). After
careful review of the references and reasoning presented in the Answer (pages 26 through
29) and appellants’ Brief (pages 23 and 24), we find ourselves in agreement with
appellants that the examiner has not established that a person of ordinary skill in the art, at
the time of the invention, would have had a reasonable expectation that bacterial catechol
dioxygenase would be functional in a plant, or that the bacterial enzyme would function in
concert with plant degradative enzymes to produce more extensive degradation than
catechol dioxygenase alone.
In addition to the references already discussed, Fillatti and Don (“quaternary
references”) were cited in the rejections of claims 18 and 23 through 25 under 35 U.S.C. §
103 (rejections IV and V). Neither reference remedies the underlying deficiency in the
examiner’s conclusion of obviousness.
Accordingly, the rejections of claims 3, 4, 7, 9, 10 and 12 through 25 under
35 U.S.C. § 103 are reversed.
Rejection under 35 U.S.C. § 112, second paragraph
We note appellants’ effort to amend claims 22 through 24 to depend from a
pending claim, rather than canceled claim 1. We have no authority to review the
examiner’s denial of entry of the proposed amendment. That being the case, the claims
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