Appeal No. 95-3117
Application 08/096,207
not so great as to be unexpected. The AChE activity of
the instantly claimed compound is 13.8 + 0.7 nmol, while
the activity of the reference comound [sic] is 24 + 6
nmol.
Given the margin of error in the figure for the Yu
compound, the difference in activity could be as slight
as 3.5 nmol. Such a difference in activity is not so
great as to be considered unexpected.
In our view, the examiner’s findings and conclusions result
from her failure to consider all that Yu I teaches. The
examiner must consider all the evidence on the question of
obviousness. In re Sernaker, 702 F.2d 989, 996, 217 USPQ 1, 7
(Fed. Cir. 1983).
In considering whether the subject matter appellants
claim would have been obvious to a person having ordinary
skill in the art, the examiner must first determine what
results the combined prior art teachings as a whole would have
led persons having ordinary skill in the art reasonably to
expect when using the compounds, compositions, and methods
appellants claim. The
expected results are then compared to the results applicants
report. See In re Dow Chemical Co., 837 F.2d 469, 473, 5
USPQ2d 1529, 1531-32 (Fed. Cir. 1988):
[T]he full field of the invention must be considered; for
the person of ordinary skill is charged with knowledge of
the entire body of technological literature, including
that
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