Appeal No. 2002-1367 Page 7
Application No. 08/981,964
of ordinary skill in the art would have been aware that many
biosynthetic pathways are regulated by several different means (for
example, both transcription and translational regulation may be
found) as this provides additional flexibility at a lower cost in
resources. For all of these reasons one of ordinary skill in the art
would have reasonably expected in view of the teachings of
Servouse [ ] that fungal ergosterol biosynthesis is regulated by the
control of the amount of acetoacetyl-CoA thiolase in the cell and
this regulation would be effected at least in part by regulation of
gene transcription of the acetoacetyl-CoA thiolase gene.
Examiner’s Answer, pages 7-8.
The above response as to why one of ordinary skill in the art would have
expected that regulation of acetoacetyl-CoA thiolase amounts in a cell is
accomplished, at least in part, by regulation of gene transcription, is a conclusion
of the examiner that is not supported by any evidence in the record. “Conclusory
statements,” however, as to teaching, suggestion or motivation to arrive at the
claimed invention “do not adequately address the issue” of obviousness. See In
re Lee, 277 F.3d 1338, 1343-44, 61 USPQ2d 1430, 1433-34 (Fed. Cir. 2002).
Moreover, appellants cite the Dimster-Denk reference, see Appeal Brief, page 9,
which teaches that regulation of the enzyme 3-hydroxy-3-methylglutaryl
coenzyme reductase in S. cerevisiae, which is involved in isoprenoid synthesis, is
at the level of translation, and not at the level of transcription. Appellants have
thus made of record evidence that one of ordinary skill would not have
necessarily expected enzyme regulation to occur at the level of transcription.
Because the examiner has not provided evidence to support the
conclusion that one of ordinary skill in the art would have reasonably expected
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