Appeal No. 94-3676
Application 07/949,327
encodes human interferons and DNA which encodes non-human
mammalian interferon, (c) based on the evidence of record as a
whole, persons having ordinary skill in the art reasonably
would have expected success in isolating DNA which encodes
non-human mammalian interferons using probes based on DNA
which encodes human interferons, purifying the isolated DNA,
cloning the non-human mammalian DNA in bacterial hosts, and
expressing the DNA in bacterial hosts to synthesize non-human
mammalian interferons, all without undue experimentation.
Based on the evidence in this record and the precedent of
our reviewing court at the time the issues in this case were
briefed, we reverse the examiner’s holding. Moreover, in
light of the more recent decisions in In re Bell, 991 F.2d
781, 785,
26 USPQ2d 1529, 1532 (Fed. Cir. 1993), and In re Deuel, 51
F.3d 1552, 1559, 34 USPQ2d 1210, 1215 (Fed. Cir. 1995), which
instruct that “a general method of isolating cDNA or DNA
molecules is essentially irrelevant to the question whether
the specific molecules themselves would have been obvious, in
the absence of other prior art that suggests the claimed DNAs”
(Id.), the examiner’s error is apparent.
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