Appeal No. 94-3676
Application 07/949,327
cells,” the evidence of record does not establish that persons
having ordinary skill in the art reasonably would have
expected a high degree of structural homology among DNAs which
encode human and non-human mammalian interferons without some
prior knowledge of the comparative amino acid sequences of the
human and corresponding non-human mammalian interferons.
Absent that knowledge, the use of DNA which encodes human
interferon to probe for DNA which encodes the corresponding
non-human mammalian interferon would have been no more than
“obvious-to-try”. See In re Eli Lilly & Co., 902 F.2d 943,
945, 14 USPQ2d 1741, 1743 (Fed. Cir. 1990):
An “obvious-to-try” situation exists when a general
disclosure may pique the scientist’s curiosity, such that
further investigation might be done as a result of the
disclosure, but the disclosure itself does not contain a
sufficient teaching of how to obtain the desired result,
or that the claimed result would be obtained if certain
directions were pursued.
The examiner cites In re O’Farrell, 853 F.2d 894, 903,
7 USPQ2d 1673, 1681 (Fed. Cir. 1988) for the proposition that
no more than a reasonable expectation of success is required
for a holding of obviousness under 35 U.S.C. § 103 (Ans., p.
7). However, O’Farrell also instructs at 903, 7 USPQ2d 1681,
that a suggestion is “obvious-to-try” when, as here, the
“prior art gave either no indication of which parameters were
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