Appeal No. 94-2156
Application 07/888,366
the same -Trp-Gly-Trp-Cys- internal sequence (Trp has a unique
codon) as the known 43 amino acid sequence of mature hevein
(Ans., pp. 9-11), yet the fact that appellants’ claims are
drawn to cDNA which encodes a novel 204 amino acid precursor
is not considered to be a material distinction. We disagree.
The examiner states (Ans., pp. 11-13, bridging para.
(3)):
While applicants urge that the actual gene
expression product and encoding cDNA sequence are
larger than the known hevein protein having only
43 amino acids, one of ordinary skill in the art
in carrying out the method of Weissman . . . would
have inherently or inevitably obtained the full-length
cDNA sequence corresponding to the gene encoding the
protein which included these 43 amino acids . . . .
In our view, the examiner erroneously equates the requisite
“likelihood of success” to inevitability. Rather, for
obviousness under 35 U.S.C. § 103, persons having ordinary
skill in the art would have had to have a reasonable
expectation of success in view of the cited prior art. See In
re O’Farrell,
853 F.2d at 904, 7 USPQ2d at 1681 (“For obviousness under §
103, all that is required is a reasonable expectation of
success.”)
The examiner predicts (Ans., p. 12, l. 12-17):
- 9 -
Page: Previous 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 Next
Last modified: November 3, 2007