Appeal No. 1997-2532
Application No. 08/427,569
detecting a virus with any reasonable expectation of success of obtaining oligonucleotides
comprising SEQ ID NOs. 6-53 as specifically claimed.
Second, the examiner has failed to point out, and we do not find, where Ratner
provides any particular recognition or suggestion of the specific sequences, i.e., SEQ ID
NOs. 6-53, required by the claimed invention.
None of Urdea, Seiki or Stratagene provide any particular recognition or
suggestion of SEQ ID NOs 6-53 as required by the claimed invention. Therefore, in our
view the examiner's rejection can be aptly characterized as an "obvious to try" rejection,
i.e., obvious to try any nucleotide sequence contained within the 9,000-plus nucleic acid
HTLV-1 genome. Simply opining that "any oligonucleotide probe from the HTLV-1
sequences of Ratner or Seiki are deemed functionally equivalent to the claimed
oligonucleotides" (answer, p. 12), without a factual basis supporting that opinion, is
insufficient to establish a conclusion of obviousness. As stated in In re O'Farrell, 853 F.2d
894, 903, 7 USPQ2d 1673, 1681 (Fed. Cir. 1988)
... 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. In others, what was "obvious to try" was to
explore a new technology or general approach that seemed to be a
promising field of experimentation, where the prior art gave only general
guidance as to the particular form of the claimed invention or how to achieve
it. (citations omitted).
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