Appeal No. 1997-3116
Application 08/294,953
different Order within the family Insecta, and that the references provide no basis
on which the skilled artisan would expect T. ni cells to behave similarly.
Appellant also argues that Granados (‘435) actually teaches away from the
claimed cell lines, in that Granados (‘435) teaches that established T. ni cell lines
were adapted to serum-free medium, “as is commonly practiced in the art.”
Thus, Appellant concludes that the cited references would not have provided a
person of ordinary skill in the art with an expectation that Stiles’ method would be
successful if applied to T. ni cells.
Although the prior art need not provide absolute predictability of success,
it must provide those skilled in the art with a reasonable expectation of success.
In re O’Farrell, 853 F.2d 894, 903-04, 7 USPQ2d 1673, 1681 (Fed. Cir. 1988).
The consistent criterion for determination of obviousness is whether
the prior art would have suggested to one of ordinary skill in the art
that this process should be carried out and would have a
reasonable likelihood of success, viewed in the light of the prior art.
Both the suggestion and the expectation of success must be
founded in the prior art, not in the applicant’s disclosure.
In re Dow Chemical Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed. Cir.
1988) (citations omitted).
We have carefully considered the evidence and reasoning presented by
Appellant and the examiner, and we find ourselves in agreement with
Appellant—the cited prior art would not have provided those of ordinary skill in
the art with an adequate basis to expect that the method taught by Stiles would
succeed when applied to Trichoplusia ni. Stiles successfully established cell
lines from cotton boll weevil cells in serum-free medium but made no prediction
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