Appeal No. 2005-1383
Application No. 09/364,847
that because the fusion protein taught by Peoples comprises the genes encoding PHB
and PHA polymerase, said protein would not catalyze successive reactions in a PHA
pathway, “but alternative reactions- i.e., either addition of short chain or long chain
substrate” [emphasis omitted]. Id. With respect to the teachings of Bülow, the
appellants contend that they are prophetic and, thus, do not provide an expectation that
a fusion protein comprising enzymes which catalyze successive reactions would be
successful. Id., p. 16. We find these arguments unpersuasive.
First, we find that the appellants’ arguments in the Brief are primarily focused on
the shortcomings of the individual references and are not directed to the combined
teachings of Peoples and Bülow. We point out that the references were relied on in
combination and that the appellant cannot demonstrate nonobviousness by attacking
the references individually. In re Betz, 418 F.2d 942, 947, 163 USPQ 691, 695 (CCPA
1969); In re Young, 403 F.2d 754, 757, 159 USPQ 725, 728 (CCPA 1968).
Second, we agree with the examiner that Peoples, in combination with Bülow,
would have suggested to one of ordinary skill in the art the invention set forth in
representative claim 1.3 In this regard, we find that Peoples discloses DNA sequences
which encode two catalytically active enzymes which act on substrate in successive
reactions in a PHA biosynthetic pathway, and plasmids which comprise said DNA
sequences. For example, Peoples discloses constructing plasmids which express two
3 Although Peoples assays the isolated β-ketothiolase and acetoacetyl-CoA reductase
genes disclosed therein for their ability to produce PHB (see, e.g., Tables 2 and 3),
these enzymes are the same as those involved in the production of PHA. See, pages
1-2 of the specification. In fact, the specification discloses the isolation of the same
β-ketothiolase and acetoacetyl-CoA reductase genes from A. eutrophus as is taught by
Peoples (page 18, lines 17-25), and performs the same assays for PHB activity (see,
e.g., Table I, page 22) with the enzymes said genes encode.
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