Appeal No. 2001-1842 Page 3
Application No. 08/684,005
thereby.” Id. To make up for this deficiency in Bauer, the examiner simply
asserts that it is well known in the art to transform and express heterologous
genes in a large variety of different host cells. Answer, pages 4-5.
The claimed invention requires, inter alia, that the gene encoding the
sucrose synthase polypeptide be operably linked to a heterologous promoter that
expresses the gene. According to the examiner, when Bauer is combined with
the well known knowledge in the art “it would have been obvious to one of
ordinary skill in the art to insert the gene of Bauer into an expression vector and
to express the gene in order to produce large quantities of sucrose synthase.”
Upon review of this record, it is our opinion that the examiner failed to
evaluate the question of obviousness using the correct legal standard. The
examiner may establish a case of prima facie obviousness “only by showing
some objective teaching in the prior art or that knowledge generally available to
one of ordinary skill in the art would lead that individual to combine the relevant
teachings of the references.” In re Fritch, 972 F.2d 1260, 1265, 23 USPQ2d
1780, 1783 (Fed. Cir. 1992). “The factual inquiry whether to combine references
must be thorough and searching.” In re Lee, 277 F.3d 1338, 1345, 61 USPQ2d
1430, 1433 (Fed. Cir. 2002), quoting McGinley v. Franklin Sports, Inc., 262 F.3d
1339, 1351-52, 60 USPQ2d 1001, 1008 (Fed. Cir. 2001). Moreover, it is
improper for this board, and for that matter the examiner, to hold claims
unpatentable for obviousness based solely on conclusory statements about what
is “common knowledge” or “well known” in the art, without objective evidence in
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007