Appeal No. 1995-2611
Application 07/808,452
required is that the amount of experimentation “must not be unduly
extensive.” Atlas Powder Co., v. E.I. DuPont De Nemours & Co., 750 F.2d
1569, 1576, 224 USPQ 409, 413 (Fed. Cir. 1984). The Patent and
Trademark Office Board of Appeals summarized the point well when it
stated:
The test is not merely quantitative, since a considerable
amount of experimentation is permissible, if it is merely
routine, or if the specification in question provides a
reasonable amount of guidance with respect to the direction in
which the experimentation should proceed to enable the
determination of how to practice a desired embodiment of the
invention claimed.
Ex parte Jackson, 217 USPQ 804, 807 (1982).
Here, all we have is the examiner’s assertion that one skilled in the art can only make and
use the claimed invention throughout its scope through undue experimentation. Clearly, the
fact finding needed in order to support this assertion has not been done by the examiner.
Accordingly, we must reverse this rejection.
Obviousness
As stated in Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1573,
37 USPQ2d 1626, 1629, (Fed. Cir. 1996) (citation omitted):
It is well-established that before a conclusion of obviousness may be made
based on a combination of references, there must have been a reason,
suggestion, or motivation to lead an inventor to combine those references.
The examiner sets forth at page 4 of the Final Rejection (Paper No. 13, April 22, 1993),
that the reason for combining the references was "to cleave RNA." The examiner
distanced herself from this statement in the paragraph bridging pages 9-10 stating "The
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