Appeal No. 2004-0601 Page 4
Application No. 08/989,140
disclosed by that reference either explicitly or through reference to another
document. See id. at 3-4.
Appellants contend that neither Revuelta nor the combination enables the
claimed invention “because the references do not show or suggest how to make
such mutants and how to assay the complementation to these mutants to identify
the rib1, rib2, rib4, and rib7 genes,” arguing that the statement in Revuelta that
they have cloned all six genes does not amount to an enabling disclosure “for the
isolation of said genes.” Id. at 4. Perkins does not remedy the deficiency of
Revuelta, according to appellants, because Perkins pertains to the use of the rib
genes from Bacillus, a prokaryotic organism, wherein the genes are organized in
one operon, whereas the rib genes of S. cerevisae are distributed over the whole
genome of the organism.
We agree with appellants that the rejection fails to set forth a prima facie
case of obviousness. “[T]he Examiner bears the burden of establishing a prima
facie case of obviousness based upon the prior art. ‘[The Examiner] can satisfy
this burden 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) (citation omitted). An
adequate showing of motivation to combine requires “evidence that ‘a skilled
artisan, confronted with the same problems as the inventor and with no
knowledge of the claimed invention, would select the elements from the cited
prior art references for combination in the manner claimed.’” Ecolochem, Inc. v.
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