Appeal No. 1997-0791
Application No. 08/172,332
Appellants argue that the examiner is not using the proper standard for obviousness
but is instead using the obvious to try standard which the Federal Circuit has rejected.
Reply Brief, page 11. The appellants also argue that the examiner merely speculates that
“one of ordinary skill in the art would have a reasonable expectation of success of isolating
the flop variant of the cDNA of Pucket et al. by using the flip variant of Pucket et al. as a
probe in view of the high degree of homology of the two variants of Sommer et al.” Reply
Brief, pages 11-12. Thus appellants ultimately argue that their specifically claimed DNA
sequence is neither taught in nor suggested by the prior art. We agree.
As set forth in Pro-Mold & Tool Co v. Great Lakes Plastics, Inc., 75 F.3d 1568,
1573, 37 USPQ2d 1626, 1629 (Fed. Cir. 1996):
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.
Absent a fact-based explanation from the examiner as to why the specific DNA
sequence of SEQ ID NO:2 would have been obvious to one of ordinary skill in the art as
required by claim 5 on appeal, we find that the examiner has not properly established the
initial burden of providing reasons of unpatentability. In re Oetiker, 977 F.2d 1443, 1446,
24 USPQ2d 1443, 1445 (Fed. Cir. 1992). We find no reason, suggestion or motivation in
the references of record for obtaining the specific DNA sequence claimed.
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