Appeal No. 94-3676
Application 07/949,327
critical or no direction as to which of many possible choices
is likely to be successful” or the “prior art gave only
general guidance as to the particular form of the claimed
invention or how to achieve it” even though it would seem
promising “to explore a new technology or general approach.”
Id.
The examiner appears to justify the holding of
obviousness in this case in-part because appellants are said
to have presented inconsistent arguments in response to
earlier rejections under 35 U.S.C. § 112, first paragraph
(Ans., p. 7, first full para.), now withdrawn. We suspect,
based on statements in Deuel, that the examiner may have
withdrawn the wrong rejection. See In re Deuel, 51 F.3d 1552,
1559, 34 USPQ2d 1210, 1216 (Fed. Cir. 1995):
A general incentive does not make obvious a particular
result, nor does the existence of techniques by which
those efforts can be carried out.
However, at 1560, 34 USPQ2d at 1216, Deuel instructs:
Because Deuel’s patent application does not describe how
to obtain any DNA except the disclosed cDNA molecules,
claims . . . may be considered to be inadequately
supported by the disclosure of the application.
Once the examiner conceded patentability under 35 U.S.C.
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