Appeal No. 94-2156
Application 07/888,366
encodes the 204 amino acid hevein precursor strongly support
the patentability of the subject matter claimed in this case.
Accordingly, we reverse the examiner’s rejection of Claims 3
and 4 under 35 U.S.C. § 103 in view of the combined teachings
of Walujono, Broekaert, and Weissman.
In re Dow Chemical Co., 837 F.2d 469, 473, 5 USPQ2d 1529,
1531 (Fed. Cir. 1988) instructs:
The consistent criterion for determination
of obviousness is whether the prior art would have
suggested to one of ordinary skill in the art that
this process should be carried out and would have
a reasonable likelihood of success, viewed in the light
of the prior art. . . . Both the suggestion and the
expectation of success must be founded in the prior
art, not in the applicant’s disclosure.
At 473, 5 USPQ2d at 1532, the court explains:
There must be a reason or suggestion in the art for
selecting the procedure used, other than the knowledge
learned from the applicant’s disclosure.
Here, as in Dow Chemical Co., 837 F.2d at 473, 5 USPQ2d at
1532, “[o]f the many scientific publications cited . . . none
suggests that any process could be used successfully . . . to
produce this product having the desired properties.”
The prior art cited in this case reasonably brings the
claimed subject matter to no higher than the “obvious-to-try”
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