Appeal No. 95-3056
Application 07/833,718
Second, whether or not applicants solved “a very simple
problem” (Ans., p. 7, l. 6-7) “is not inimical to
patentability.” In re Oetiker, 977 F.2d 1443, 1447, 24 USPQ2d
1443, 1446 (Fed. Cir. 1992). Oetiker also instructs at 1447,
25 USPQ2d at 1446:
See Goodyear Tire & Rubber Co. v. Ray-O-Vac Co., 321 U.S.
275, 279, [60 USPQ 386, 388] (1944)(simplicity of itself
does not negate invention); Panduit Corp. v. Dennison
Mfg Co., 810 F.2d 1561, 1572, 1 USPQ2d 1593, 1600
(Fed. Cir.)(the patent system is not foreclosed to
those who make simple inventions), cert. denied, 481 U.S.
1052 (1987).
Third, In re Sponnoble, 405 F.2d 578, 160 USPQ 237 (CCPA
1969), teaches at 585, 160 USPQ at 243:
. . . [A] patentable invention may lie in the discovery
of the source of a problem even though the remedy may be
obvious once the source of the problem is identified.
This is part of the “subject matter as a whole” which
should always be considered in determining the
obviousness
of an invention under 35 U.S.C. § 103.
Here, the examiner finds, based on applicants’ own disclosure
and declaratory evidence, that (1) the 2-octynyl adenosines
which Miyasaka and Matsuda isolated are both hydrates (Ans.,
p. 5,
l. 27-28), and (2) practical production of 2-octynyl adenosine
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