Appeal No. 1996-2123
Application No. 08/069,458
In addition to appellants= Reply Brief we recognize pages 22, 23 and 33-35 of the specification
where Acetobacter strains are mutagenized and successfully screened for the claimed characteristics.
Therefore, we disagree with the examiner=s conclusion at page 3 of the Examiner=s Answer that A[t]hus
even if one skilled in the art ran the process, the artisan would be left to guess as to whether the
microorganism would fit within the scope of the claims.@
The examiner takes the position, in the bridging paragraph of pages 8-9 of the Examiner=s Answer
that:
[T]he prior art (see the Valla reference) suggests different forms or
mutants of Acetobacter which do not produce cellulose. Thus it is not
readily predictable which strains of Acetobacter will perform in the
claimed process and appellants have provided insufficient guidance to
permit ready determination of those strains which will work and those
strains which will not work in the absence of excess experimentation.
The examiner continues at page 9 of the Examiner=s Answer with the statement A[a]lso spontaneously
formed negative cellulose mutants of A. xylinum were found to accumulate if the wild type was grown
and transferred repeatedly in shake flask cultures (see [Valla] page 1402 of the Results).@ At page 10 of
the Examiner=s Answer, the examiner states A[t]o select for the cellulose negative forms and the cellulose
positive forms would be tedious and the stability of these types as demonstrated by the Valla reference
would be unpredictable in this art.@
In the bridging paragraph of pages 12-13 of the Examiner=s Answer, the examiner states:
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