Appeal No. 1998-0529
Application No. 07/961,076
Both the suggestion and the reasonable expectation of success must be found in the prior
art, not in appellants’ disclosure. In re Dow Chemical Co., 837 F.2d 469, 473, 5 USPQ2d
1529, 1531 (Fed. Cir. 1988).
The examiner relies on Gokhale as disclosing a process of transferring a fucose
from nucleoside 5'-diphospho-fucose to the hydroxyl group of a carbohydrate in the
presence of a transferase. (Office Action of February 9, 1995 (Paper No. 15), pages 2-3).
The examiner relies on Wong, Ichikawa (I), and Ichikawa (II) as disclosing the synthesis of
sialyl carbohydrate by transferring the sialyl group to the carbohydrate from a nucleoside
sialic acid in the presence of a sialyl transferase. In addition, these secondary references
describe the regeneration in situ of the nucleoside sialic acid in the presence of sialic acid
and a synthetase. (Paper No. 15, page 3).
The examiner concludes that (Paper No. 15, page 3):
it would have been obvious to regenerate the neucleoside [sic]
fucose in the process of Gokhale et al. by supplying fucose
and a synthetase as suggested by the secondary references
disclosing an analogous regeneration. It would have been
expected that in situ regeneration of neucleoside [sic] 5'-
diphosphate fucose in the process of Gokhale et al. would
have been advantageous for the same reason that in situ
regeneration of neucleoisde [sic] sialic acid is advantageous
in the processes of the secondary references.
Thus, the examiner's position can be summarized by stating that Gokhale discloses
a process which reasonably corresponds to step "(a)" of claim 1. The secondary
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