Appeal No. 1997-1713
Application 08/381,839
In similar manner, even if one of ordinary skill in this art would have found in the statements of
Chen et al. that “genetic mutants” of bacteriorhodopsin with optimized properties for optical information
storage and processing which might be produced with biotechnological processes could be employed in
the processes using “purple membranes” disclosed therein (e.g., page 5189, right column, and page
5195, right column), and in the similar statements of Hampp et al. (e.g., col. 1) the teaching, suggestion
or motivation to use such “purple membranes” in the compositions of the process of Chen et al.,
wherein the “M intermediate” is stabilized at “room temperature,”8 we fail to find any reason or evidence
in the record which explains why one of ordinary skill in this art would have been led to so employ the
“purple membrane” of Oesterhelt et al., the bacteriorhodopsin variant of which apparently does not
exhibit an “M intermediate” (see above pp. 2-3). And, even if one of ordinary skill in this art would
have found such a teaching, suggestion or motivation in the applied references to employ such a
bacteriorhodopsin variant in the compositions of Chen 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 of Chen et al. modified to contain the
“purple membrane” of Oesterhelt et al..
Accordingly, it is inescapable from the record before us that none of these three combinations of
references applied by the examiner taken as a whole would have resulted in the claimed invention. See
In re Rouffet, 149 F.3d 1350, 1358, 47 USPQ2d 1453, 1458 (Fed. Cir. 1998) (the specific
understanding or principal within the knowledge of one of ordinary skill in the art leading to the
modification of the prior art in order to arrive at appellants’ claimed invention must be explained);
Uniroyal, supra.
Therefore, it is abundantly manifest from this record that the examiner has improperly indulged in
hindsight by relying on appellants’ disclosed and claimed invention in reaching his conclusion that the
invention encompassed by the appealed claims would have been obvious to one of ordinary skill in this
8 We observe that Chen et al. does contain such teachings (e.g., page 5190, right column, beginning at
line 24, to page 5191, right column, end of section), appellants’ arguments notwithstanding (e.g., brief,
page 11).
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