Appeal No.2001-2506 Page 4
Application No. 08/415,658
Olivieri is cited for teaching the isolation and immobilization of an Agrobacterium
enzyme system on a solid support for use in the conversion of D,L-5-substituted
hydantoins to the corresponding D-amino acids.
Appellants argue in response to the rejection that although Neal discloses
a “wish” to use non-inducible promoters, Neal does not enable their use, and that
Neal in fact teaches away from non-inducible promoters because all of the
disclosed data pertains to the use of inducible promoters. See Appeal Brief,
page 4. In addition, appellants argue there is nothing in the references that
“suggests the particular deposited plasmid of the present invention, or a specific
deposited microorganism transformed with such, or a process using such.” Id. at
6.
We agree with appellants that there is nothing in the prior art of record
that teaches or suggests the particular deposited plasmid as required by the
claims that are the subject of this appeal, i.e., the pSM651 plasmid, having the
deposit number CBS 203.94. While, as stated by the rejection set forth by the
answer, the prior art may teach or suggest a plasmid containing genes for both
the hydantoinase and carbamoylase activities under the control of a non-
inducible promoter, the prior art does not teach or suggest a plasmid having the
nucleotide sequence of the plasmid required by the products of claims 13, 14
and 15—the pSM651 plasmid. See, e.g., In re Deuel, 51 F.3d 1552, 1558-59, 34
USPQ2d 1210, 1215 (Fed. Cir. 1995); In re Bell, 991 F.2d 781, 783-84, 26
USPQ2d 1529, 1532 (Fed. Cir. 1993). Because a plasmid having the nucleotide
sequence of the pSM651 plasmid is not taught or suggested by the prior art, the
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007