Appeal No. 95-4692
Application 08/141,316
Inc., 776 F.2d 281, 297 n. 24, 227 USPQ 657, 667 n. 24 (Fed.
Cir. 1985), cert. denied, 475 U.S. 1017 (1986). It is
impermissible for the examiner to use the applicants'
specification as an instruction manual or template to piece
together the teachings of the prior
art. In re Dow Chemical Co., 837 F.2d 469, 473, 5 USPQ2d
1529, 1531-32 (Fed. Cir. 1988).
In the case before us, the examiner’s overall position is
that since one of ordinary skill in the art routinely
synthesizes pravastatin by contacting certain genera of
microorganisms with compactin, esters or salts thereof, it,3
therefore, would have been obvious to such persons to produce
pravastatin by contacting any genera of microorganism with
compactin, or analogs thereof. However, from a fair reading
of the references relied upon by the examiner, it is difficult
for us to discern on what basis this conclusion was reached.
In our view, the teachings of the Terahara patents are
Viz., Mucor, Rhizopus, Zygorynchus, Circinella,3
Actinomucor, Gongronella, Phycomyces, Martierella, Pycnoporus,
Rhizoctonia, Absidia, Cunninghamella, Syncephalastrum,
Streptomyces and Nocardia.
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