Appeal No. 94-3007
Application 07/809,039
1500, 1502 (Fed. Cir. 1988)(“The board attributes to the
‘hypothetical person’ knowledge of all prior art in the field
of the inventor’s endeavor . . . . That view accords with the
plethora of this court’s precedent.”) The evidence in this
case indicates that persons knowledgeable in the pertinent art
reasonably would not have expected that ring position isomers
and anyhdrides of known A-21978C cyclic peptides would exhibit
antibacterial activity.
Having considered all the evidence, we find that persons
having ordinary skill in the art would not have been motivated
to do what the inventors have done with reasonable expectation
of obtaining a new antibacterial agent. The prior art
teaching as a whole, given the possibility of and the rewards
for success, may have been sufficient to invite skilled
artisans to look at compounds structurally similar to known
antibacterial agents in the hope of finding new antibacterial
agents. However, obvious to try or obvious to experiment is
not the standard for obviousness under 35 U.S.C. § 103. In re
O’Farrell, 853 F.2d 894, 903, 7 USPQ2d 1673, 1681 (Fed. Cir.
1988); In re Dow Chemical Co., 837 F.2d 469, 473, 5 USPQ2d
1529, 1532 (Fed. Cir. 1988). We reverse the examiner’s
rejection of Claims 3, 5-7, 12, 14-16, 19, 22, 23, 25-27, 30
- 13 -
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007