Appeal 2007-1819
Application 09/886,055
would have lead to a reasonable expectation of success in this case. See,
e.g., In re O’Farrell, 853 F.2d 894, 903-04, 7 USPQ2d 1673, 1681 (Fed.
Cir. 1988) (“Obviousness does not require absolute predictability of success.
. . . For obviousness under § 103, all that is required is a reasonable
expectation of success.”). (See also FF 9.)
As previously stated, appropriately framed, the issue is, would it have
been obvious to one of ordinary skill in the art to use Burford’s SEQ ID NO:
27 (Appellants’ SEQ ID NO:55) in the assay method taught by Krautwurst,
as required by claim 23? Based on the record before us, I conclude the
Examiner has made a prima facie case that it would have been obvious to the
skilled artisan—a case that Appellants have not rebutted.
Likewise, since Appellants did not separately argue the patentability
of claims 25-33, I would also affirm their rejection pursuant to 37 C.F.R.
§ 41.37(c)(1)(vii) (2006).
lbg
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