Appeal No. 1995-2772
Application 08/001,063
further investigation might be done as a result of the disclosure, but the disclosure itself
does not contain a sufficient teaching of how to obtain the desired result, or that the
claimed result would be obtained if certain directions were pursued.”)
The proper approach to obviousness must take the claimed invention “as a whole”
into account. Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1566-68,
1 USPQ2d 1593, 1595-97 (Fed. Cir.), cert. denied, 481 U.S. 1052 (1987); Stratoflex, Inc.
v. Aeroquip Corp., 713 F.2d 1530, 1539, 218 USPQ 871, 879 (Fed Cir. 1983). Here, the
invention as a whole requires that the examiner establish that it would have been obvious
to one of ordinary skill in the art that a recombinant host transformed with the E. coli bioH
gene would be capable of producing more biotin than a cell which is not transformed with
the gene. Because the evidence of record establishes that the function of the bioH gene
was not known, it reasonably follows that it would not have been obvious to those of
ordinary skill that the expression of the E. coli bioH gene in a host cell would result in the
production of a recombinant cell having the claimed characteristics.
We acknowledge the examiner’s arguments that those skilled in the art would have
had a reasonable expectation of success in improving biotin yields based on Gloeckler’s
disclosure that the B. sphaericus bioF, bioW and bioX genes “allowed
E. coli mutants deficient in the activity of the bioH gene to utilize pimelate as the precursor
for biotin biosynthesis. ... [and because] ... Gloeckler et al. teach their opinion that the bioH
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