Appeal No. 1995-2789
Application No. 07/788,114
recognition or binding site for feedback inhibition.” In the last paragraph (page
3230) Reinscheid teach “[t]o gain more information on the proposed L-threonine
recognition or binding locus (amino acids 403 to 417), site-directed mutagenesis
experiments must be done.” Therefore, in our opinion, a person of ordinary skill
in the art would consider making site directed modifications in the L-threonine
recognition or binding locus, amino acids 403 to 417. Each of appellants’ claims
6 and 11-13 are outside this region. We further note, that Reinscheid’s focus on
amino acids 403 to 417 fails to suggest the truncated protein required by claim
10. Therefore, in our opinion a person of ordinary skill in the art would not have
had a reasonable expectation of success in obtaining the modified enzymes
claimed.
On the record before us, we find no reasonable suggestion, and no
reasonable expectation of success, in obtaining the claimed invention from the
combination of references relied upon by the examiner. The initial burden of
presenting a prima facie case of obviousness rests on the examiner. In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). On
these facts, the examiner failed to provide the evidence necessary to support a
prima facie case of obviousness. Where the examiner fails to establish a prima
facie case, the rejection is improper and will be overturned. In re Fine, 837 F.2d
1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
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