Appeal 2007-1069
Application 10/334,990
identifying and functional characteristics, this would have aided the skilled
person in the construction of additional enzymes within the claim scope.
We also find Appellant’ arguments persuasive that it would not
require undue experimentation to express the genus of claimed enzymes in
bacteria, and use the bacteria to produce amino acids, because such methods
were well known in the art at the time the application was filed. (Br. 24-26).
In sum, we conclude that a person of ordinary skill in the art would
have clearly possessed sufficient knowledge to make and use the full scope
of the claims. We reverse the rejection of claims 17-19, 21-24, 26-28,
30-38, 42, 45, and 46 as lacking enablement.
Rejection under § 103
Claims 17, 18, and 30 stand rejected under 35 U.S.C. § 103(a) as
obvious over Wagner (Answer 10).
Wagner teaches microorganisms which are capable of converting
5-monosubstituted hydantoins or N-carbamoyl alpha amino acids into pure
L-amino acids using a carbamoylase, hydantoinase, and hydantoin racemase
(Wagner, col. 1, ll. 8-12; Answer 10). Wagner also describes obtaining a
gene coding for a carbamoylase, hydantoinase, or hydantoin racemase
(Wagner, col. 1, ll. 65-67). “As persons of ordinary skill would appreciate,
these genes may be useful for” inserting into a microorganism to “produce
large amounts of the enzyme(s)” (Wagner, col. 3, ll. 28-36).
In reaching an obviousness determination, it is necessary to identify
the differences between the claimed invention and the prior art, and then to
determine whether these differences are obvious in view of the scope and
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