Appeal No. 2005-1383
Application No. 09/364,847
invention at the time the application was filed. Vas-Cath Inc. v. Mahurkar, 935 F.2d at
1563-64.
In view of the foregoing, Rejection I is reversed.
II. Obviousness over Peoples and Bülow
It is well established that the examiner has the initial burden under § 103 to establish
a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992); In re Piasecki, 745 F.2d 1468, 1471-72, 223 USPQ 785,
787-88 (Fed. Cir. 1984). To that end, it is the examiner’s responsibility to show that
some objective teaching or suggestion in the applied prior art, or knowledge generally
available [in the art] would have led one of ordinary skill in the art to combine the
references to arrive at the claimed invention. Pro-Mold & Tool Co. v. Great Lakes
Plastics, Inc., 745 F.3d 1568, 1573, 37 USPQ2d 1626, 1629 (Fed. Cir. 1996).
Here, the examiner argues that Peoples discloses “the isolation and nucleotide
sequence of genes encoding beta-ketothiolase, acetoacetyl-CoA reductase, and PHB
polymerase from Zoogloea ramigera and Alcaligenes eutrophus (columns 6-14 and
Figures 1-4).” Answer, p. 7. The examiner further argues that Peoples discloses (i) that
“co-expression of beta-ketothiolase, acetoacetyl-CoA reductase, and PHB polymerase
genes in E. coli results in the formation and accumulation of PHB (e.g., column 19, lines
36-40 and column 22, lines 18-21)”; (ii) “beta-ketothiolase, acetoacetyl-CoA reductase,
and PHB polymerase can be co-expressed in plants”; (iii) “methods of engineering plant
cells for expression of the enzymes for production of PHB”; and (iv) “a representative
example of a PHB polymerase-PHA polymerase fusion enzyme (column 23,
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