Appeal No. 94-3676
Application 07/949,327
Even assuming a significant degree of homology between DNA
which encodes human interferon and DNA which encodes non-human
mammalian interferon, the evidence in this record reasonably
would not have led persons having ordinary skill in the art to
expect success without undue experimentation.
The examiner correctly states that absolute
predictability of success is not required for obviousness.
The prior art need not ensure success (Ans., pp. 8-9, bridging
para.). We agree.
However, in our view, (1) the evidence cited in this case
would no more than have invited persons having ordinary skill
in the art to experiment with little or no guidance or
direction, and (2) the claimed “essentially purified and
isolated DNA sequence encoding a polypeptide consisting
essentially of the amino acid sequence of a non-human
mammalian interferon” (Claim 12) in essence stands finally
rejected in view of “a general method of isolating cDNA or DNA
molecules” which 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.” In re Deuel, 51 F.3d at 1559,
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