Appeal No. 1995-2789
Application No. 07/788,114
While we take no position on the merits of any such rejection under 35
U.S.C. § 102(a) based on prior knowledge, to assist in his analysis of this issue,
we recommend that the examiner consider Massachusetts Inst. of Technology v.
AB Fortia, 774 F.2d 1104, 227 USPQ 428 (Fed. Cir. 1985).
Reinscheid:
According to the examiner (Answer, page 8) Reinscheid “teach a mutant
homoserine dehydrogenase of Corynebacterium glutamicum which is insensitive
to feedback inhibition by threonine due to an altered amino acid at the carboxyl
terminal and a method of producing and selecting for such mutant….” In
response appellants’ explain (Reply Brief, page 9) that:
The [e]xaminer commented in the Advisory Action mailed
December 10, 1993 that the description in the parent application
was insufficient for benefit under 35 U.S.C. § 120 and that the
description was lacking for the broad scope of the mutants claimed.
Appellants assumed that the 35 U.S.C. § 102(a) rejection was
maintained and filed the 131 Declaration with [a]ppellants’ Brief.
The examiner, however, with reference to 37 CFR § 1.195, did not
consider or enter the declaration into the record. According to the examiner
(Answer, bridging paragraph, pages 16-17), “the declaration was not timely filed,
and appellants have failed to shown good and sufficient reasons as to why they
[sic] were [sic] not earlier presented….” At this point, we note that appellant
made no attempt on this record to petition the examiner’s refusal to enter the
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