Appeal No. 1995-2772
Application 08/001,063
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cell which has not been transformed with said gene. This issue is also at the core of all
four rejections under 35 U.S.C. § 103. Thus, there is one issue which is dispositive of this
appeal. That is, the correctness of all the rejections hinges on a determination of whether it
would have been obvious to one of ordinary skill in the art to construct a biotin
overproducing recombinant cell by transforming said cell with an
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E. coli bioH gene in view of O’Regan and Fisher. From another perspective, the
2We note that claims 68 through 73 are directed to a recombinant molecule
comprising an E. coli bioH gene which is operatively-linked to a transcription control
sequence. Thus, technically speaking these claims do not require a recombinant host cell
having the referenced biotin-producing characteristics. However, the sole reason provided
by the examiner as to why it would have been obvious to one of ordinary skill in the art to
transform a host cell with an E. coli bioH gene which has been placed under the control of
a suitable promoter (e.g., claim 68) is to increase the yield of biotin in a recombinant host
cell. Answer, p. 12. Since the examiner has not provided any evidence to support the
reason, and from our discussion it is apparent that we find the evidence of record to be to
the contrary, we have considered these claims as being on the same footing as all the
others. That is, in view of the examiner’s statement of the rejection, the patentability of
these claims, like that of all the others, hinges on whether it would have been obvious to
those having ordinary skill in the art that an E. coli bioH gene which is operatively linked to
transcription control sequences and expressed in a host cell would result in a host cell
capable of producing more biotin than a host cell which has not been transformed with said
gene.
3 We recognize that the examiner has also relied on Gloeckler, a reference which,
inter alia, discloses complementing a bioH E. coli mutant with a plasmid comprising a
DNA encoding the Bacillus sphaericus bioF, bioW and bioX genes.
Col. 12, lines 39-40; Figures 22 and 23. This reference was applied in the first Office
action against the original claim 44 which encompassed an E. coli bioH gene or a
“functional equivalent thereof.” The phrase “functional equivalent thereof” was removed by
amendments filed by the appellant in Paper Nos. 10 and 14. In our view, the examiner
(continued...)
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