Appeal No. 2002-1367 Page 5
Application No. 08/981,964
speculation, unfounded assumptions or hindsight reconstruction to supply
deficiencies in its factual basis. To the extent the Patent Office rulings are so
supported, there is no basis for resolving doubts against their correctness.
Likewise, we may not resolve doubts in favor of the Patent Office determination
when there are deficiencies in the record as to the necessary factual bases
supporting its legal conclusion of obviousness.” In re Warner, 379 F.2d 1011,
1017, 154 USPQ 173, 178 (CCPA 1967), cert. Denied, 389 U.S. 1057 (1968)
(emphasis in original).
As noted by the rejection, Servouse teaches that that acetoacetyl-CoA
thiolase is the first enzyme of the ergosterol biosynthesis pathway of yeast, and
that the activity of this enzyme is induced by ergosterol starvation and repressed
by ergosterol excess. Servouse conjectures that “[e]nzyme depression is very
likely due to reduced enzyme synthesis, since we . . . have been unable to detect
feedback inhibition by ergosterol in vitro.” Servouse, page 546, column 1.
With respect to Servouse, appellants assert that Servouse did not analyze
mRNA or protein levels, “[t]herefore, it would have been a matter of pure
speculation to hypothesize that regulation of sterol biosynthesis was at the level
of transcription, translation, or some combination involving transcription and
translation.” Appeal Brief, page 4. Appellants argue further that at the time of
the invention, little was known about the acetoacetyl-CoA thiolase (ACoAT)
enzyme and its regulation. According to appellants, the enzyme may have been
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