Appeal No. 1997-0791
Application No. 08/172,332
an enormous number of DNA sequences coding for the protein. No particular one of these
DNAs can be obvious unless there is something in the prior art to lead to the particular
DNA and indicate that it should be prepared.” In re Deuel, 51 F.3d 1552, 1559, 34
USPQ2d 1210, 1215 (Fed. Cir. 1995).
Moreover, the court in Deuel found that the existence of a general method of
isolating cDNA or DNA molecules 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. Thus, even if, as the examiner stated, the existence of
general cloning techniques, coupled with knowledge of a protein's structure, might have
provided motivation to prepare a DNA or made it obvious to prepare a DNA, that does not
necessarily make obvious a particular claimed DNA. "Obvious to try" has long been
held not to constitute obviousness. In re O'Farrell, 853 F.2d 894, 903, 7 USPQ2d 1673,
1680-81 (Fed. Cir. 1988). A general incentive, as indicated by the examiner, does not
make obvious a particular result, nor does the existence of techniques by which those
efforts can be carried out. In re Deuel, 51 F.3d 1552, 1559, 34 USPQ2d 1210, 1215-16
(Fed. Cir. 1995). The Deuel court also stated: “The fact that one can conceive a general
process in advance for preparing an undefined compound does not mean that a claimed
specific compound was precisely envisioned and therefore obvious.” In re Deuel, 51
F.3d 1552, 1559, 34 USPQ2d 1210, 1216 (Fed. Cir. 1995).
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