Appeal 2007-1069
Application 10/334,990
Cir. 2006). However, in this case, the Examiner has only made conclusory
statements, and has not presented sufficient evidence that a person of
ordinary skill in the art would have known to overexpress hydantoinase,
hydantoin racemase, and carbomoylase according to their turnover rates in
order “to reduce the accumulation of intermediates in the conversion of the
5-monosubstituted hydantoins to L- or D-amino acids” as required by claim
17.
Wagner describes gene cloning and expression of cloned genes coding
for amino acid producing enzymes (Wagner, col. 3, ll. 25-40), but does not
disclose specific cloning or expression methods. Wagner also states that a
“person of ordinary skill would appreciate” that the cloned genes could be
used for expression purposes (Wagner, col. 3, ll. 28-32). Based on this
evidence, it is reasonable to presume that expression methods were well-
known in the art and that one of ordinary skill did not require explicit
instructions on how to express genes.
Although the skilled worker was knowledgeable about cloning and
expressing genes, and may have had reason to express all three genes in a
single microorganism, the Examiner presents no evidence that the skilled
worker would have known to overexpress the genes “according to the[ir]
turnover rates . . . to reduce the accumulation of intermediates in the
conversion of the 5-monosubstituted hydantoins to L- or D-amino acids” as
required by claim 17. The Examiner states that “accumulation of
intermediates can potentially reduce yield and is not efficient” (Answer 11),
but provides no support that this was common knowledge in this field.
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