Appeal No. 94-3676 Application 07/949,327 encodes human interferons and DNA which encodes non-human mammalian interferon, (c) based on the evidence of record as a whole, persons having ordinary skill in the art reasonably would have expected success in isolating DNA which encodes non-human mammalian interferons using probes based on DNA which encodes human interferons, purifying the isolated DNA, cloning the non-human mammalian DNA in bacterial hosts, and expressing the DNA in bacterial hosts to synthesize non-human mammalian interferons, all without undue experimentation. Based on the evidence in this record and the precedent of our reviewing court at the time the issues in this case were briefed, we reverse the examiner’s holding. Moreover, in light of the more recent decisions in In re Bell, 991 F.2d 781, 785, 26 USPQ2d 1529, 1532 (Fed. Cir. 1993), and In re Deuel, 51 F.3d 1552, 1559, 34 USPQ2d 1210, 1215 (Fed. Cir. 1995), which instruct that “a general method of isolating cDNA or DNA molecules is essentially irrelevant to the question whether the specific molecules themselves would have been obvious, in the absence of other prior art that suggests the claimed DNAs” (Id.), the examiner’s error is apparent. - 7 -Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 NextLast modified: November 3, 2007