Appeal No. 2005-1745
Application No. 09/161,680
of the filing date sought” that they were in possession of the invention as now claimed.
Lockwood v. American Airlines, 107 F.3d at 1572, 41 USPQ2d at 1966; Vas-Cath v.
Mahurkar, 935 F.2d at 1563-64, 19 USPQ2d at 1117.
VI. Another issue
In the event of further prosecution, the examiner may wish to consider whether
the claims are patentable under 35 U.S.C. § 103 in view of Greener alone or in
combination with another reference. Greener discloses a method of generating a new
catalytic activity of two enzymes, $-lactamase and alkaline phosphatase by introducing a
DNA sequence encoding said enzymes into the E. coli strain XL1-Red and incubating
the transformed E. coli to generate mutations in the DNA sequence. Greener further
discloses transferring the mutated DNA sequence into a strain which lacked the enzyme
activity, incubating this strain in the presence of a selection medium, and selecting
microorganisms which showed a new activity. Greener still further discloses the XL1-
Red mutator strain can be used “for introducing random mutations in a clones gene
when a genetic selection or screen for variants is available.” Greener, p. 384, last para.
Greener also describes “[t]he advantage in using XL1-Red for random mutagenesis
(over e.g., chemical mutagenesis or a PCR-based protocol) is that the mutation rate can
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