Ex parte CACECI et al. - Page 9




          Appeal No. 94-3056                                                           
          Application 07/812,421                                                       


          reasonably supported by the Chakrabartty and Scott teachings.                
          These references note the significance of the number of ice                  
          contact points, but they do not lessen the significance of                   
          other factors, including the known number of contiguous                      
          repeats in known antifreeze polypeptides.                                    
               Hindsight shall not form the basis of a conclusion of                   
          obviousness under 35 U.S.C.  103.  “Both the suggestion and                 
          the expectation of success must be founded in the prior art,                 
          not in the applicant’s disclosure.”  In re Dow Chemical Co.,                 
          837 F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed. Cir. 1988).  The                
          prior art of record does not denominate the critical features                
          of appellants’ invention; i.e. proteins containing the six-                  
          repeat and eight-repeat sequences required by claims 32-37.                  
          As the Federal Circuit stated in Sensonics, Inc. v. Aerosonic                
          Corp.,                                                                       
          81 F.3d 1566, 1570, 38 USPQ2d 1551, 1554 (Fed. Cir. 1996):                   
                    To draw on hindsight knowledge of the                              
                    patented invention, when the prior art                             
                    does not contain or suggest that knowledge,                        
                    is to use the invention as a template for                          
                    its own reconstruction - an illogical and                          
                    inappropriate process by which to determine                        
                    patentability. . . . The invention must be                         
          viewed not after the blueprint has been                                      
          drawn by the inventor, but as it would have                                  
                                          9                                            





Page:  Previous  1  2  3  4  5  6  7  8  9  10  11  12  13  Next 

Last modified: November 3, 2007