Appeal No. 95-4692
Application 08/141,316
therefrom, or an enzyme having the structure of enzyme derived
from said microorganisms, which is capable of catalyzing the
hydroxylation of the referenced compound. However, when the
referenced compound is compactin, the claimed method excludes
the use of microorganisms selected from genera Nocardia,
Amycolata and Streptomyces.
I.
The examiner argues that the appellants have not
demonstrated that the claimed hydroxylation reaction can be
performed with an enzyme, nor have the appellants isolated and
characterized any enzyme. Answer, p. 3. The examiner further
argues that:
The specification does not contain any evidence
that the process can indeed be performed by an
individual enzyme in a cell free system.
Applicant has [sic, applicants have] apparently
isolated no enzyme which will accomplish the
claimed process and in fact has [sic, have]
really not even shown that the process is mono-
enzymatic in nature and not in fact cell
dependent, hence there is no reasonable
expectation that the process is in fact
enzymatic. Therefore without any
characterization of the enzymatic reaction or
enzyme itself, applicant has [sic, applicants
have] not enabled claims drawn to the use of an
enzyme as it would require undue experimentation
by one of ordinary skill in the art at the time
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