Appeal No. 2001-1842 Page 4
Application No. 08/684,005
support of that knowledge. See Lee, 277 F.3d at 1344, 61 USPQ2d at 1434-
1435.
Since the examiner failed to provide any objective evidence in support of
her assertion that it is well known in the art to transform and express
heterologous genes in a large variety of different host cells the rejection cannot
be sustained. This is, however, not the only reason why the examiner’s position
cannot be sustained. According to appellants (Brief, page 3), “Bauer does not
provide methods that would enable a person of ordinary skill in the relevant art to
successfully isolate the bacterial sucrose synthase gene.” In this regard,
appellants argue (id.) with reference to In re Vaeck, 947 F.2d 488, 493,
20 USPQ2d 1438, 1442 (Fed. Cir. 1991), “[w]hile Bauer discloses a putative
amino acid sequence of a very small fragment of the sucrose synthase gene, the
reference provides no teaching that would suggest to one of ordinary skill in the
art the making of the claimed invention nor a reasonable expectation of success
in the endevor.”
According to appellants (Brief, page 6), Bauer found “the two standard
techniques that an individual of ordinary skill in the art would use to isolate a
complementary gene were wholly unsuccessful,” therefore Bauer had to employ
a novel method. Appellants note (id.), however, that “[w]hile the [novel] method
is disclosed by the reference, Bauer does not teach the sequence of the 200 bp
fragment used to isolate the region nor the sequence of the 8kb insert ultimately
isolated.” Therefore, appellants argue (Brief, bridging paragraph, pages 6-7),
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