Appeal No. 1995-1977
Application 07/669,403
heat-inactivated NCS, would be a desirable modification for growing ungulate
embryonic stem cells.
In effect, the instant rejection says that it would have been obvious to vary
the composition of the growth medium for ungulate embryonic stem cells, even
though the prior art gives no indication that inclusion of heat-inactivated NCS was
critical and no direction as to what modifications in the growth medium would
likely be successful. This is not obviousness under § 103, but rather an
“obvious-to-try” rejection, as discussed in In re O’Farrell, 853 F.2d 894, 903,
7 USPQ2d 1673, 1681 (Fed. Cir. 1988): “In some cases, what would have been
‘obvious to try’ would have been to vary all parameters or try each of numerous
possible choices until one possibly arrived at a successful result, where the prior
art gave either no indication of which parameters were critical or no direction as
to which of many possible choices is likely to be successful.” We, therefore,
reverse this rejection.
12
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: November 3, 2007