Appeal No. 2006-0102 Page 19
Application No. 09/732,439
In other words, “there still must be evidence that ‘a skilled artisan, . . . 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.
Southern California Edison, 227 F.3d 1361, 1375, 56 USPQ2d 1065, 1075-76
(Fed. Cir. 2000).
As discussed above, there is no evidence on this record that would
suggest a transformed monocot plant within the scope of appellants’ claimed
invention. At best, the evidence would suggest producing a transformed dicot
plant. While the examiner asserts that methodology was available in the art as of
appellants’ effective filing date to produce a transformed moncot, the examiner
fails to favor this record with any evidence to support this assertion, as well as to
suggest that a person of ordinary skill in the art would have been motivated to do
so at the time of appellants’ effective filing date.
For the foregoing reasons we are compelled to reverse the rejection of
claims 59-63, 72 and 73 under 35 U.S.C. § 103, as being unpatentable over the
combination of Verma II and Rayapati.
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