Appeal No. 94-2156
Application 07/888,366
pp. 8-13) to appellants’ argument that the prior art presents
persons having ordinary skill in the art with no more than an
invitation to experiment, an argument that refers to In re
Bell,
991 F.2d 781, 26 USPQ2d 1529 (Fed. Cir. 1993), especially the
court’s discussion of Weissman’s method of probing for and
isolating cDNA encoding proteins with known amino acid
sequences and the relevance of methods of isolating cDNA using
probes based on the amino acid structure of the protein it
encodes to the patentability of claims drawn to the cDNA
itself. For example, the examiner emphasizes that HEV1 has3
3 Neither the examiner nor appellants have addressed
or considered the more recent holdings and opinions in In re
Deuel,
51 F.3d 1552, 34 USPQ2d 1210 (Fed. Cir. 1995) and Ex parte
Goldgaber, 41 USPQ2d 1172 (Bd. Pat. App. & Int. 1995).
Moreover, resolution
of the issues in this case does not necessitate our
consideration
of the holdings and opinions in those cases relative to In re
Bell, supra, with in depth comparison of the underlying facts
in this
case to the facts therein. It should suffice to say that the
decision in this case is dictated by the fact unique to this
case that the claimed cDNA, HEV1, encodes a sequence of 204
amino acids, not the 43 amino acid sequence the prior art
discloses. See
In re Ochiai, 71 F.3d 1565, 1572, 37 USPQ2d 1127, 1133 (Fed.
Cir. 1995) (Obviousness determinations require a fact-specific
analysis of the claims and prior art. Per se rules of
obviousness are legally incorrect.)
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