Appeal No. 94-2232
Application 07/888,367
peptide having 204 amino acids encoded by the cDNA utilized in
the method of Claim 7 has 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’ claimed method
utilizes cDNA which encodes a 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
minations require a fact-specific analysis of the claims and prior
art. Per se rules of obviousness are legally incorrect.)
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