Appeal No. 1997-3116
Application 08/294,953
that the disclosed method would be likely to succeed with cells from other insect
species. On the contrary, Stiles stated that their cell lines were “apparently the
first invertebrate cells to have been both isolated and continuously subcultured in
a serum-free tissue culture medium.” Page 355.
Similarly, Granados (‘435) disclosed that it was the “commonly practice[]
in the art” to establish T. ni cell lines in serum -containing medium, and later adapt
them to serum -free medium. The examiner argues that this teaching shows that
Granados appreciated the advantages of serum-free medium for insect tissue
culture, and therefore it would have been obvious to establish T. ni cell lines in
serum-free medium from the start. The examiner’s argument, however, proves
too much. The fact that Granados knew of the advantages of serum -free
medium suggests that Granados (‘435) would have taught establishing T. ni cell
lines in serum-free medium, if such an approach had been considered likely to
succeed. The fact that Granados (‘435) teaches establishing T. ni cell lines in
serum-containing medium, then adapting the cells to serum-free medium,
suggests that those skilled in the art believed that T. ni cell lines could only be
established in media that contained serum.
Although “[f]or obviousness under § 103, all that is required is a
reasonable expectation of success,” In re O’Farrell, 853 F.2d at 904, 7 USPQ2d
at 1681, that “expectation of success must be founded in the prior art, not in the
applicant’s disclosure.” In re Dow Chemical Co., 837 F.2d at 473, 5 USPQ2d at
1531. The prior art relied on by the examiner here would not have provided a
person of ordinary skill in the art with a reasonable expectation that the method
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