Appeal No. 2003-0736 Page 7
Application No. 09/720,007
references would have made the claimed method obvious to try. “An ‘obvious-to-
try’ situation exists when a general disclosure may pique the scientist’s curiosity,
such that further investigation might be done as a result of the disclosure, but the
disclosure itself does not contain a sufficient teaching of how to obtain the
desired result, or that the claimed result would be obtained if certain directions
were pursued.” In re Eli Lilly & Co., 902 F.2d 943, 945, 14 USPQ2d 1741, 1743
(Fed. Cir. 1990). “‘[O]bvious to try’ is not the standard under § 103.” In re
O’Farrell, 853 F.2d 894, 903, 7 USPQ2d 1673, 1680 (Fed. Cir. 1988).
Summary
The references relied on by the examiner do not specifically suggest the
claimed method nor do they provide a reasonable expectation of success. We
therefore reverse the rejection under 35 U.S.C. § 103.
REVERSED
Donald E. Adams )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Eric Grimes )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Lora M. Green )
Administrative Patent Judge )
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