Appeal No. 94-2232
Application 07/888,367
level. See In re Eli Lilly & Co., 902 F.2d 943, 945, 14
USPQ2d 1741, 1743 (Fed. Cir. 1990):
An “obvious-to-try” situation exists when a
general disclosure may pique the scientist’s curiosity,
such that further investigation might be done as a result
of the disclosure, but the disclosure itself does not
contain a sufficient teaching of how to obtain the
desired
result, or that the claimed result would be obtained if
certain directions were pursued. See generally In re
O’Farrell, 853 F.2d 894, 903, 7 USPQ2d 1673, 1681 (Fed.
Cir. 1988)(defining obvious-to-try as when prior art
gives
“only general guidance as to the particular form of the
claimed invention or how to achieve it”).
Here, the prior art provides no information whatsoever as to
the “particular form of the claimed invention or how to
achieve it.” Id. Moreover, In re O’Farrell confirms at 853
F.2d at 903,
7 USPQ2d at 1681, that the evidence the examiner relies upon
in this case presents a classic “obvious-to-try” situation
which is not the standard for unpatentability under 35 U.S.C.
§ 103:
[W]hat would have been ‘obvious to try’ would have been
to . . . try each of numerous possible choices until
one possibly arrived at a successful result, where the
prior art gave . . . no direction as to which of many
possible choices is likely to be successful.
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