Appeal No. 2004-0601 Page 5
Application No. 08/989,140
Southern Calif. Edison Co., 227 F.3d 1361, 1375, 56 USPQ2d 1065, 1076 (Fed.
Cir. 2000).
Moreover, whether a rejection is made under section 102 or section 103,
the prior art must place the invention in the possession of the public, that is,
enable one of ordinary skill to practice the invention. See In re Hoeksema, 399
F.2d 269, 274, 158 USPQ 596, 599 (CCPA 1968). With respect a nucleotide
sequences, “the existence of a general method of isolating cDNA or DNA
molecules is essentially irrelevant to the question whether the specific molecules
themselves would have been obvious.” In re Deuel, 51 F.3d 1552, 1559, 34
USPQ2d 1210, 1216 (Fed. Cir. 1995), citing In re Bell, 991 F.2d 781, 26 USPQ2d
1529 (Fed. Cir. 1993).
In this case, the only reference to the rib 1, rib 2, rib 4 and rib 7 genes
required by the process of claim 10 is the disclosure by Revuelta that that have
“[r]ecently . . . cloned all the six genes encoding flavionegic enzymes.” There is
no disclosure of the sequence of those genes, nor does the reference even teach
isolation of those genes. As acknowledged by the rejection, Revuelta only
describes the characterization of the rib3 and rib5 genes. The rejection asserts
further that one of skill in the art could readily repeat the experiments for rib3/rib5
using a selection mechanism specific for rib1, rib2, rib4, or rib7, but as noted
above, the existence of a method of preparing a DNA molecule does not render
the DNA molecule obvious. As the method of claim 10 requires the DNA
sequences of SEQ ID NO: 2 (rib 1), SEQ ID NO: 4 (rib 2), SEQ ID NO: 8 (rib 4)
and SEQ ID NO: 12 (rib 7), and as neither Revuelta or Revuelta as combined
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