Appeal No. 95-4692
Application 08/141,316
directed to the use of specific genera of microorganisms and
specific substrates. We do not find, nor has the examiner
pointed out, any teachings in the Terahara patents which would
have suggested to those of ordinary skill in the art, the use
of the claimed genera of microorganisms to produce pravastatin
from compactin or the claimed analogs. On this record, the
only place we find such a suggestion is in the appellants’
specification. Thus, in our view, the examiner has relied on
impermissible “hindsight” to arrive at the conclusion that the
present invention is obvious over the prior art. In re
Fritch, supra; Interconnect Planning Corp. v. Feil, 774 F.2d
1132, 1138, 227 USPQ 543, 547 (Fed. Cir. 1985) (“It is
impermissible to engage in hindsight reconstruction of the
claimed invention, using the applicant’s structure as a
template and selecting elements from references to fill the
gaps”).
Accordingly, the rejection is reversed.
Other Issues
Upon return of this application to the corps, the
examiner should reconsider whether there is a factual basis
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