Appeal No. 1997-2080
Application No. 08/159,939
We disagree. As set forth in In re Kotzab, 217 F.3d 1365, 1369-70, 55 USPQ2d
1313, 1316 (Fed. Cir. 2000):
A critical step in analyzing the patentability of claims pursuant to section
103(a) is casting the mind back to the time of invention, to consider the
thinking of one of ordinary skill in the art, guided only by the prior art
references and the then-accepted wisdom in the field. [] Close adherence to
this methodology is especially important in cases where the very ease with
which the invention can be understood may prompt one “to fall victim to the
insidious effect of a hindsight syndrome wherein that which only the invention
taught is used against its teacher.” [citations omitted]
. . . [T]o establish obviousness based on a combination of the elements
disclosed in the prior art, there must be some motivation, suggestion or
teaching of the desirability of making the specific combination that was
made by the applicant.
The examiner’s rejection rests on the assertion that one would have been motivated
to enrich the proportion of yeast-like cells in a culture of A22 and to select cells exhibiting
reduced pigmentation in order to produce non-pigmented pullulans. This statement of the
rejection is, quite simply, untenable on its face. Shumin Na states on page 5 that “[t]he
fermentation solutions of strain A22 . . . were always milky white” and “[t]he silver mirror test
indicated there existed only yeast type cells, no chlamydospores or arthrospores were
produced.” Since A22 is already yeast-like and already produces nonpigmented pullulan,
we see nothing in Shumin Na or Kelly which would provide a reason to subject the culture
to enrichment or further selection.
Moreover, we see nothing in Shumin Na or Kelly which would suggest producing
non-pigmented pullulan by subjecting other strains of A. pullulans to the specific series of
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