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
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