Appeal No. 1999-1730
Application No. 08/478,205
dissertation to be important. Only with the benefit of hindsight can this passage
be read to suggest mutating other amino acids in the 223-247 region.
We therefore agree with Appellants that the cited references would not
have motivated a person of ordinary skill in the art to alter the amino acid
sequence of P. plagiophthalamus luciferase at the positions recited in claim 1.
Since the references do not provide the requisite motivation to make the claimed
product, they do not support a prima facie case of obviousness.
Summary
We reverse the rejection for obviousness because the cited reference do
not provide the requisite motivation to modify the known compound as required
to meet the limitations of the claims.
REVERSED
Douglas W. Robinson )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Donald E. Adams )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Eric Grimes )
Administrative Patent Judge )
EG/dym
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