Appeal No. 1996-0657
Application 07/919,784
been prima facie obvious to combine the known endochitinase and chitobiosidase
in a weight ratio ranging from 3:1 to 1:1.2 in light of the combined disclosures of
references relied upon, including Gooday and Kuhn. We disagree.
We have no doubt that the prior art could be modified in the manner
proposed by the examiner to arrive at appellants’ composition and method. This
can be seen from a review of the instant specification and claims. Merely because
the prior art could be so modified, however, would not have made the modification
obvious unless the prior art suggested the desirability of the modification. In re
Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). That is not
the case here.
This is not a case of using components in combination for anti-fungal activity,
each component having been used individually in the prior art for anti-fungal activity.
Cf. In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980)
(Prima facie obvious to combine two compositions each of which is taught by the
prior art to useful for the same purpose, in order to form a third composition to be
used for the very same purpose). The examiner has not established that the first set
of references teach that endochitinase from a fungal source has anti-fungal activity.
Nor has the examiner established that the second set of references teach that
chitobiosidase from a fungal source has anti-fungal activity.
According to the examiner, “Gooday teaches that the degradation of chitin in
the cell walls of fungi is an important method of the biocontrol of fungi” (Examiner’s
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