Appeal No. 1997-1713
Application 08/381,839
variant does not display “an M intermediate in the photocycle” (e.g., col. 8, lines 38-47). We further
fail to find any evidence in any of Chang et al., Chen et al. and Birge et al., or in any other applied
reference, that at least one of the “auxiliaries” specified in claim 17 has ever been used in a composition
that contains any form of bacteriorhodopsin and the examiner has not supplied any evidence or
explanation that such use would have been within the knowledge of one of ordinary skill in this art.
Based on this record, we find that the combined teachings of Chang et al., Chen et al. and Birge
et al. would not have resulted in the claimed invention encompassed by claims 5, 7, 8, 11, 12 and 16.6
Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1050-54, 5 USPQ2d 1434, 1438-41 (Fed.
Cir. 1988).
In considering the remaining three grounds of rejection which include Oesterhelt et al., we find
no teaching or suggestion in Chang et al. that the purple membrane from the “S-9” cell line was used in a
composition for any purpose other than to prepare “blue membranes.”7 We find no reason or evidence
in the record before us which establishes that one of ordinary skill in this art would have found in any of
the three combinations of references any teaching, suggestion or motivation to use the “purple
membrane” containing the bacteriorhodopsin variant disclosed in Oesterhelt et al. in a composition as
the starting material for preparing a “blue membrane” in the process of Chang et al. Even if there was
such teaching, suggestion or motivation in the three combinations of references to so modify the
compositions of Chang et al., and even if it was known in the art to use the “auxiliaries” specified in
claim 17 in composition containing bacteriorhodopsin, the examiner has identified no teaching,
suggestion or motivation in these combinations of references which would have led one of ordinary skill
to use such “auxiliaries” in compositions for preparing “blue membranes” in the process of Chang et al.
6 The examiner included in the statement of this (answer, page 3) and the other three grounds of
rejection (pages 6, 7 and 8) claim 4 which was canceled in the amendment of March 25, 1996 (Paper
No. 10).
7 We find no reason or evidence in either the answer (page 4) or the supplemental answer which
explains why one of ordinary skill in this art would have considered a composition containing a “pink
membrane” as disclosed in Chang et al. to be “similar” to a “purple membrane” in any respect other than
the relationship in which the “purple membrane” is used as the starting material to make the intermediate
“blue membrane” from which the “pink membrane” is prepared.
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