Appeal No. 1995-2789
Application No. 07/788,114
In response, the examiner argues (Answer, page 17) “given various
mutagenesis techniques taught by Winnacker, it would have been prima facie
obvious for the ordinary skilled artisan to have further extended the work taught
by Reinscheid et al. and to obtain other carboxy terminus mutants of homoserine
dehydrogenase which are deregulated.”
We remind the examiner that while a person of ordinary skill in the art may
possess the requisite knowledge and ability to modify the protocol taught by
Reinscheid, the modification is not obvious unless the prior art suggested the
desirability of the modification. In re Gordon, 733 F.2d 900, 902, 211 USPQ
1125, 1127 (Fed. Cir. 1984). Here while Reinscheid suggests (page 3230, last
paragraph) performing site-directed mutagenesis experiments “[t]o gain more
information on the proposed L-Threonine recognition or binding locus (amino
acids 403 to 417)” there is no suggestion to make the specific modifications
claimed.
Furthermore, as set forth in In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d
1438, 1442 (Fed. Cir. 1991), in addition to the suggestion or motivation to modify
the references or combine reference teachings, to establish a prima facie case of
obviousness, there must also be a reasonable expectation of success. In this
regard, we note that Reinscheid teach (page 3230, first paragraph, last
sentence) “the region from amino acid 403 to 417 may be the L-threonine
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