Appeal 2007-1819
Application 09/886,055
Burford’s Table 3, “a person of ordinary skill has good reason to pursue the
known options within his or her technical grasp. If this leads to anticipated
success, it is likely the product not of innovation but of ordinary skill and
common sense.” KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1742, 82
USPQ2d 1385, 1397 (2007).
The Supreme Court’s reasoning in KSR is applicable here. Utilizing
Burford’s disclosed potential olfactory receptor sequences in Krautwurst’s
assay would have been “the product not of innovation but of ordinary skill
and common sense” and should not be patented. Thus, based on the
Examiner’s reasoning and our findings above, I conclude the invention of
claim 23 would have been obvious to one of ordinary skill in the art at the
time the invention was made.
In reversing the Examiner’s rejections, the majority states:
“Obviousness requires a teaching that all elements of a claimed invention
are found in the prior art” (supra p. 9 (emphasis added)). There is no
support offered for this proposition. As the Federal Circuit has made clear
“obviousness does not require the prior art to reach expressly each limitation
exactly. Rather, obviousness may render a claimed invention invalid where
the record contains a suggestion or motivation to modify the prior art
teaching to obtain the claimed invention.” Beckson Marine, Inc. v. NFM,
Inc., 292 F.3d 718, 727, 63 USPQ2d 1031, 1037 (Fed. Cir. 2002). This error
is repeated elsewhere (see, e.g., supra p. 9 (“without the knowledge that
SEQ ID NO: 55 is an olfactory receptor, one would not be able to draw any
conclusion from its inclusion in Krautwurst’s method”) (emphasis added)).
The law does not require knowledge SEQ ID NO:55 is an olfactory
receptor but only that it is more likely than not to be one. Such knowledge
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