Ex parte SCHUMACHER et al. - Page 6

               Appeal No. 1996-1093                                                                                              
               Application No. 07/300,357                                                                                        
               to 40 residues preceding the initiation of translation.”  Scripture merely lists the sequence of nucleotides      

               1-72 (Scripture, Figure 3) which appear to correspond at least in part to the claim language in that this         

               72 nucleotide sequence is 5’ of the ATG codon of the mglB signal sequence, and the claims are drawn               

               to a “ region up to, but not including the                                                                        

               ATG codon.”  However, lacking in both Muller and Scripture is any reference to a mgl                              

               promoter/operator region that would allow a person of ordinary skill in the art to obtain this region as          

               claimed.  Therefore, we can not agree with the examiner’s conclusion that “[d]elineating the precise              

               nucleotide sequence for the mglB regions utilized by Muller would have been obvious in view of the                

               sequencing of the mglB initiation region and gene (including delineation of the signal sequence) as taught        

               by Scripture.”   See, Examiner’s Answer, page 4.                                                                  

                      To the extent that the references could be combined as the examiner argues, the combination is             

               inconsistent with the proper standard for obviousness.  The mere fact that the prior art could be so              

               modified would not have made the modification obvious unless the prior art suggested the desirability of          

               the modification.  In re Laskowski, 871 F.2d 115, 117, 10 USPQ2d 1397, 1398-99 (Fed. Cir.                         

               1989); In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984).                                     

                      The examiner cites In re Keller, 642 F. 2d 413, 425, 208 USPQ 871, 881 (CCPA 1981), at                     

               page 2 of the Supplemental Examiner’s Answer, for the proposition that “the test [for obviousness] is             

               what the combined teachings of the references would have suggested to those of ordinary skill in the              


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