Appeal No. 94-2232
Application 07/888,367
expectation of success in view of the cited prior art. See In
re O’Farrell,
853 F.2d at 903, 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):
Thus, one of ordinary skill in the art would have kept
probing until encountering the intact terminator (i.e.,
including polyadenylation signal) and such a sequence
would have inherently encoded the rest of the naturally
encoded previously unknown polypeptide portion C-terminal
to the N-terminal 43 amino acid sequence which was known.
The position taken by the examiner falls from its own weight.
Since the examiner admits that the C-terminal position of the
protein in question was “unknown” at the time of the present
invention, it is not clear why one of ordinary skill in the
art would have had reason to look for it, let alone a
reasonable expectation of finding it. This is not obviousness
within the meaning of 35 U.S.C. § 103. This is surprise which
is more indicative of patentability.
B. Rejections under 35 U.S.C. § 102(f) and § 103
But for the fact that the claimed subject matter in In re
Katz, 687 F.2d 450, 215 USPQ 14 (CCPA 1982), was rejected
17
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