Ex parte UYEDA et al. - Page 5

          Appeal 1996-2010                                                            
          Application 07/941,650                                                      

          particular B. thuringiensis strain” (Ans., p. 5).  The                      
          examiner also finds that Sick and Soares describe DNA                       
          sequences which encode Bt toxins which are active against                   
          coleopteran insects and are the same or substantially the same              
          as DNA selected from the group consisting of appellants’ DNA                
          SEQ ID NO. 3, SEQ ID NO. 5, and fragments of those sequences                
          (Ans., p. 4, first full para.).                                             
               Based on no more than the above findings, the examiner                 
          leaped to the conclusion that “one of ordinary skill in the                 
          art would have had a reasonable expectation that the strains                
          recited in the rejected claims would be effective against                   
          lepidopteran pests in addition to coleopteran pests” (Ans., p.              
          5).  While the examiner acknowledged Dr. Gaertner’s testimony               
          that dual activity is rare amongst B. thuringiensis toxins                  
          (Ans., p. 5), the examiner critically erred when applying a                 
          “not wholly unexpected”                                                     
          standard for obviousness and not the “reasonable likelihood of              
          success” standard which has been consistently applied.  In re               
          Dow Chem. Co., supra.                                                       
               We find no basis in the cited prior art for persons                    
          having ordinary skill in the art to reasonably expect that Bt               
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