Appeal No. 95-4692
Application 08/141,316
general teaching, it would have been well within
the purview of the skilled artisan to perform
the microbial process of the references using
other microorganisms which are closely related
to those used in the reference. The teachings
of the Terehara [sic] references, given their
breadth, provide the skilled artisan with a
reasonable expectation that the closely related
micro-organisms will function in a like manner
and perform the conversion [Answer, pp. 5-6].
We find this position untenable.
It cannot be gainsaid that the examiner has the burden
under § 103 to establish a prima facie case of obviousness.
In re Fine, 837 F.2d 1071, 1074-76, 5 USPQ2d 1596, 1598-
1600 (Fed. Cir.
1988); In re Piasecki, 745 F.2d 1468, 1471-72, 223 USPQ 785,
787-88 (Fed. Cir. 1984). To that end, the examiner must show
that some objective teaching or suggestion in the applied
prior art, or knowledge generally available in the art, would
have led those of ordinary skill to combine the teachings of
the references to arrive at the claimed invention. Pro-Mold &
Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1573, 37
USPQ2d 1626, 1630 (Fed. Cir. 1996); In re Fritch, 972 F.2d
1260, 1266, 23 USPQ2d 1780, 1783-84 (Fed. Cir. 1992); In re
Fine, supra; Ashland Oil, Inc. v. Delta Resins & Refractories,
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