Appeal No. 94-2232
Application 07/888,367
Compare the examiner’s responses (Examiner’s Answer
(Ans.),
pp. 8-13) to appellants’ argument that the prior art presents
persons having ordinary skill in the art with no more than an
invitation to experiment, an argument that refers to In re
Bell,
991 F.2d 781, 26 USPQ2d 1529 (Fed. Cir. 1993), especially the
court’s discussion of Weissman’s method of probing for and
isolating cDNA encoding proteins with known amino acid
sequences and the relevance of methods of isolating cDNA using
probes based on the amino acid structure of the protein it
encodes to the patentability of claims drawn to the cDNA
itself. For example, the examiner emphasizes that the4
4 Neither the examiner nor appellants have addressed or
considered the holdings and opinions in In re Deuel, 51 F.3d 1552,
34 USPQ2d 1210 (Fed. Cir. 1995) and Ex parte Goldgaber, 41 USPQ2d
1172 (Bd. Pat. App. & Int. 1995). Moreover, resolution of the
issues in this case with regard to the patentability of Claims 7
and 9(7) does not necessitate our consideration of the holdings
and opinions in those cases relative to In re Bell, supra, with in
depth comparison of the underlying facts in this case to the facts
therein. It should suffice to say that the decision in this case
is dictated by the fact unique to this case that the claimed
method uses cDNA which encodes a sequence of 204 amino acids, not
the 43 amino acid sequence the prior art discloses. See In re
Ochiai, 71 F.3d 1565,
1572, 37 USPQ2d 1127, 1133 (Fed. Cir. 1995)(Obviousness deter-
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