Appeal No. 1998-1866
Application 08/406,883
The Examiner does not find that the data supported the conclusion that
the instant microbe does not produce laccase. The Examiner is not persuaded
because the procedure that is used to create the data can be determinative as to
the presence or absence of an enzyme…. Those in the biotechnical arts are fully
aware of the effects of a certain media upon an organism’s expression of certain
enzymes.
A better method for determining whether the prior art microbe and the
instant microbe are distinct, as previously suggested by the Examiner (Paper #16
of June 1997), is to perform side-by-side evaluations of the microbes, where the
only difference in the evaluation is the microbe being tested. This is the most
clear cut way to show that said microbes are distinct.
As we understand the examiner’s position, the examiner believes that it is
possible that culturing Blanchette’s strain F361 and appellants’ strain SKB-1152 under
differing conditions can be determinative as to whether laccase activity is observed. If
this is the examiner’s position, it lacks factual support based on the evidence in this
record. The examiner has not supplied any evidence in support of his statement that
culture media will affect an organism’s expression of enzymes. Even if persons of
ordinary skill in the art would accept such a broad proposition, the issue before us in this
case is not directed to enzymes in general but, rather, to the expression of laccase by
white-rot fungi. The record is devoid of any evidence that culture conditions will affect
the expression of laccase activity in white-rot fungi. We remind the examiner that
conclusions of obviousness must be based upon facts not generalities. In re Warner,
379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967), cert. denied, 389 U.S. 1057
(1968); In re Freed, 425 F.2d 785, 788, 165 USPQ 570, 571 (CCPA 1970).
To the extent Blanchette’s description of strain F361 as being a white-rot fungi
possessing lignin degrading activity was sufficient to shift the burden to appellants
under In re Best, we find appellants’ evidence concerning laccase activity or lack thereof
in the respective strains is a sufficient rebuttal. After appellants presented their rebuttal,
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