Appeal No. 1996-0833
Application No. 08/230,879
full para.). Crueger describes using empirical selection after mutagenesis to increase the yield of a
desired product obtained with industrial microorganisms.
According to the examiner, the claimed process is an obvious optimization of the process of
Akimoto, Idemitsu ‘494 and/or Idemitsu ‘690 using old and well known techniques in the art,
specifically those described by Crueger, to mutate, screen and select mutants of a known genus to
obtain strains or mutants which have a higher yield of the desired product.
In order for a prima facie case obviousness of appellants’ claimed invention to be established,
the prior art must be such that it would have provided one of ordinary skill in the art with both a
suggestion to carry out appellants’ claimed process and a reasonable expectation of success in doing
so. See In re Dow Chemical Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed. Cir. 1988).
“Both the suggestion and the expectation of success must be founded in the prior art, not in the
applicant’s disclosure.” Id. The mere possibility that the prior art could be modified such that
appellants’ process is carried out is not a sufficient basis for a prima facie case of obviousness. See In
re Brouwer, 77 F.3d 422, 425, 37 USPQ2d 1663, 1666 (Fed. Cir. 1996); In re Ochiai, 71 F.3d
1565, 1570, 37 USPQ2d 1127, 1131 (Fed. Cir. 1995).
Here, all of the appealed claims require using a Mortierella microorganism having an ability to
produce arachidonic acid (ARA) and having a reduced or lost )5 desaturation activity, so that the
microorganism produces DGLA and ARA at a ratio of at least 2.5 (DGLA/ARA) in the absence of )5
desaturase inhibitor. While random screening, empirical selection and mutation techniques may be
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