Board of Patent Appeals and Interferences
Patent and Trademark Office (P.T.O.)
*1 EX PARTE GWYNFOR O. HUMPHREYS, CHRISTOPHER R. BAILEY AND CHRISTINE A.
Appeal No. 91-2889
June 29, 1992
Application for Patent filed December 17, 1986, Serial No. 06/943,671. Isolation of Genes For Biosynthesis Of Polyketide Antibiotics.
Primary Examiner--Richard A. Schwartz
Before Winters, W. Smith and Garris
ON REQUEST FOR RECONSIDERATION
Appellants request reconsideration of our decision of February 28, 1992.
Appellants first assert that we erred in agreeing with the examiner that pIJ2303 must be deposited under appropriate conditions in order for claims 3 through 8, 11 through 16, and 18 through 14 to be enabled. Appellants renew their arguments that one skilled in this art would be able to practice the claimed invention by using art-known techniques and readily available materials. We have carefully considered appellants' renewed arguments in this regard, but do not find our decision to be in error. While the mutation techniques in issue may be routine and well known in the art, appellants have not established on this record that such mutation techniques may be used to reproduce the needed materials without undue experimentation. The references of record relied upon by appellants as examples of successful use of mutation techniques do not address this issue in that there is insufficient background information from which one can conclude whether the successful results reported were routine rather than exceptional.
As to appellants' request for clarification of this rejection in regard to claims 4 and 12 in the paragraph bridging pages 5-6 of the Request for Reconsideration, we point out that the sole argument in the Appeal Brief of these claims is found on page 10 thereof where appellants' stated that these claims "rely only on the use of act III gene sequences." As pointed out on page 13 of our opinion, claims 4 and 12 only require the use of "the nucleic acid sequence of at least a part of the actinorhodin gene III." They are not limited to the use of the subsequently published sequence. The new arguments presented in regard to this issue in the Request for Reconsideration are untimely and we decline to consider them. [FN1]
As to appellants' arguments concerning whether the examiner correctly shifted the burden of proof to appellants to establish through objective evidence that the methods encompassed by claims 9 through 23 are enabled throughout their scope, we refer again to our discussion of this issue on pages 16-19 of our opinion. Appellants argue that a mere statement that the art is unpredictable is not a sufficient basis for the examiner to shift the burden of proof citing In re Marzocchi, 58 CCPA 1069, 439 F.2d 220, 169 USPQ 367 (1971). However, as set forth in Marzocchi, the unpredictability of a particular art area may alone be enough to create a reasonable doubt in this regard. For the reasons set forth in our original decision, we decline to change our decision in this matter.
*2 We have also carefully considered the arguments set forth on pages 8-10 of the Request in regard to the prior art rejection of claims 1 and 3 through 5 for lack of novelty. Appellants' renewed arguments are answered in our original decision.
We have carefully reconsidered our decision in light of appellants' Request for Reconsideration, but decline to change our decision in any manner.
BOARD OF PATENT APPEALS AND INTERFERENCES
Sherman D. Winters
William F. Smith
Bradley R. Garris
FN1. Our attribution of the citation of In re Glass, 492 F.2d 1228, 181 USPQ 31 (CCPA 1974), to the examiner at pages 12-13 of our opinion was inadvertent. We cited that case in support of the examiner's position that subsequently published references such as Hallam are not available for use as appellants have done herein. Again, we decline to decide the specific issue since even if Hallam is considered as available for this purpose, claims 4 and 12 are of a much broader scope than recognized by appellants' arguments.