Appeal No. 1996-2558
Application 08/152,099
enzymes which are low in CBH I content (answer, page 4). Even
if this argument is correct, the examiner has not established
a prima facie case of obviousness because appellants’ claims
require a composition which is free of all CBH I type
components, not one which is merely low in CBH I content. The
examiner has not explained why Schülein would have motivated
one of ordinary skill in the art to make a composition which
is completely free of all CBH I type components and would have
provided such a person with a
reasonable expectation of success in doing so. See In re
Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir.
1991); In re O’Farrell, 853 F.2d 894, 902, 7 USPQ2d 1673, 1680
(Fed. Cir. 1988); In re Longi, 759 F.2d 887, 892-93, 225 USPQ
645, 648 (Fed. Cir. 1985). Consequently, the examiner has not
established a prima facie case of obviousness.
DECISION
The rejections of claims 1, 2, 4-7 and 22 under 35 U.S.C.
§ 102(b) as being anticipated by Schülein and under 35 U.S.C.
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