Appeal No. 1997-0467
Application 08/318,019
the examiner has not explained how the prior art would have led a person having ordinary
skill from “here to there,” i.e., from the Maize process using cyclodextrin glycosyl
transferase produced by Bacillus, where cyclodextrinization is carried out at 30-65EC, to
the claimed process using cyclodextrin glycosyl transferase derived from a strain of
Clostridium, where cyclodextrinization is carried out above 70EC.
In the advisory action mailed July 25, 1995 (Paper No. 8), the examiner refers to In
re Durden, 763 F.2d 1406, 226 USPQ 359 (Fed. Cir. 1985). To the extent that the
examiner relies on Durden as providing support for the rejection of claims 15, 16, and 18
through 22 under 35 U.S.C. § 103, that reliance is misplaced. As stated in In re Ochiai, 71
F.3d 1565, 1570 , 37 USPQ2d 1127, 1132 (Fed. Cir. 1995), “there are not 'Durden
obviousness rejections' or 'Albertson obviousness rejections' [In re Albertson, 332 F.2d
379, 141 USPQ 730 (CCPA 1964)], but rather only section 103 obviousness rejections.”
Reliance on per se rules of obviousness, eliminating the need for a fact-specific analysis of
claims and prior art, is legally incorrect and must cease. In re Ochiai, 71 F.3d at 1572, 37
USPQ2d at 1133; In re Brouwer, 77 F.3d 422, 426, 37 USPQ2d 1663, 1666 (Fed. Cir.
1995).
Independent claim 15 requires the use of cyclodextrin glycosyl transferase “wherein
the cyclodextrin glycosyl transferase used in the treatment is derived from a strain of
Clostridium and has a pH optimum of about 5.0 and a temperature optimum in the range of
4
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