Appeal No. 1996-2123
Application No. 08/069,458
be capable of producing substantially pure reticulated cellulose; and
produce substantially low amounts of gluconic acid and ketogluconic acids in glucose-containing
medium.
While the examiner focused on the production of cellulose, the examiner did not address the
second characteristic of these strains, specifically, the production of substantially low amounts of gluconic
acid and ketogluconic acids in glucose-containing medium. In addition, the examiner=s statement of the
rejection does not address the requirements of claim 55, drawn to A[a] mutant strain of Acetobacter . . ..@
At page 36 of their Brief, appellants state A[t]he examiner has not explained why any of the Acetobacter
strains described in the cited publications possess any of the characteristic[s] possessed by the claimed
strains or why it would be obvious for the person of ordinary skill in the art to produce the claimed strains.@
We agree with appellants. Anticipation is established only when a single prior art reference discloses,
expressly or under principles of inherency, each and every element of a cla imed invention. See, RCA
Corp. v. Applied Digital Data Systems, Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir 1984).
The examiner clarifies the rejection under 35 U.S.C. ' 103, at page 17 of the Examiner=s Answer,
by stating A[h]owever, the instant claims are prima facie obvious on the basis that microorganisms are
disclosed in the cited prior art which correspond to the claims, and which result in a cellulose product
produced by fermentation of [an] Acetobacter under conditions of agitation.@ Missing from this statement
is any reference to the production of substantially low amounts of gluconic acid and ketogluconic acids in
glucose-containing medium.
At page 19 of the Examiner=s Answer, the examiner states
20
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