Appeal No. 95-4321
Application 07/976,241
and selecting elements from references to fill the gaps. In re Gorman, 933 F.2d 983, 986-
987, 18 USPQ2d 1885, 1888 (Fed. Cir. 1991). We find no reasonable suggestion,
motivation, or direction which would have suggested to one of ordinary skill in this art to
use the microorganisms of Fiehring or Hartley in the process of Beadle, in order to
selectively convert glucose, in the presence of galactose and lactose, to alcohol. Barker,
similarly, does not disclose a selective fermentation step required by claim 1.
We conclude that the examiner has failed to establish a prima facie case of
unpatentability of the claimed subject matter. Where the examiner fails to establish a
prima facie case, the rejection is improper and will be overturned. In re Fine, 837 F.2d
1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir.1988). We therefore reverse the rejection
of claims 1-6, 9 and 10 under 35 U.S.C. § 103.
Claims 11 and 14-21:
As discussed above, the appellants have grouped claims 11 and 14-21 together as
Group 2. Accordingly, we elect to consider the issues as they appl to representative claim
11. (37 CFR 1.192(c)(7)). Representative claim 11 differs from claim 1 in being directed
solely to the enzymatic isomerization of D-galactose to D-tagatose in the presence of L-
arabinose isomerase. While claim 11, and the other claims in Group Two, are rejected
over the combination of Beadle, Barker, Fiehring and Hartley, the disclosures of Fiehring
and Hartley do not relate to the isomerization of D-galactose to D-tagatose. The
relevance of Beadle to these claims is also unclear. The correlation of the disclosed
chemical isomerization process of Beadle to the enzymatic isomerization process claimed
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