Appeal No. 1997-1307
Application No. 08/014,012
The examiner speculates (Answer, page 10) that “the skilled artisan would
recognize that the conversion of UMP to UTP is essential for cell viability and the
skilled artisan would therefore reasonably expect the cells to produce the enzymes
for converting UMP to UDP … and for converting UDP to UTP.” The examiner
refers to SIGMA (Answer, page 12) to emphasize the purchase price of orotic acid,
OMP, UMP, UDP, UTP, and CTP.
The examiner concludes (Answer, page 10) that:
A person of ordinary skill … would have been motivated to
combine the C. ammoniagenes strain taught by Nudler et al. with the
recombinant E. coli taught by the combination of Weng et al., Hosaka
et al., Tsukagoshi et al. and Gennari because the skilled artisan would
realize that the UMP produced in large amounts by the C.
ammoniagenes strain of Nudler et al. is a substrate in the synthesis of
UTP, which is converted to CTP by the recombinant CTP synthetase
enzyme.
To establish a prima facie case of obviousness, there must be more than the
demonstrated existence of all of the components of the claimed subject matter.
There must be some reason, suggestion, or motivation found in the prior art
whereby a person of ordinary skill in the field of the invention would make the
substitutions required. That knowledge cannot come from the applicants'
disclosure of the invention itself. Diversitech Corp. v. Century Steps, Inc.,
850 F.2d 675, 678-79, 7 USPQ2d 1315, 1318 (Fed. Cir. 1988); In re Geiger, 815
F.2d 686, 688, 2 USPQ2d 1276, 1278 (Fed. Cir. 1987); Interconnect Planning
Corp. v. Feil, 774 F.2d 1132, 1143, 227 USPQ 543, 551 (Fed. Cir. 1985). On the
record before us, we find no reasonable suggestion for combining the teachings of
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