Appeal No. 1995-2772
Application 08/001,063
gene is regulated in common with the distant bioA, bioB, bioC, bioD and bioF genes of
the E. coli biotin operon by the repressor product of the bioR gene.... ”
Id. We point out, however, that in determining obviousness there is more than one
criterion which must be considered. It must be determined whether (i) the prior art would
have suggested the claimed invention, and (ii) those of ordinary skill in the art would have a
“reasonable expectation of success” in achieving the claimed results. In re Vaeck, 947
F.2d at 493, 20 USPQ2d at 1442 (Fed. Cir. 1991); In re Dow Chem.,
837 F.2d 469, 473, 5 USPQ2d 1529, 1531-32 (Fed. Cir. 1988); In re O’Farrell, supra.
Since the examiner has not established the former criterion, we need not reach the merits
of these secondary arguments. Moreover, as we pointed out in footnote 3, above, we do
not find the teachings of Gloeckler to be of particular relevance to the invention as now
claimed.
In view of the foregoing, Rejection II is reversed.
As discussed above, we have considered all the claims as containing the limitation
that the recombinant host cell transformed with an E. coli bioH gene be capable of
producing more biotin than a cell not transformed with said gene. Since we do not find that
this limitation is suggested by Fisher, Gloeckler and O’Regan, we cannot sustain the
examiner’s rejections of dependent claims 50, 55, 53, 57, 58, 71 and 73 over the
additional prior art of Speck, Singer and Baker. That is to say, the obviousness of the
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