Appeal No. 2001-2308
Application 07/704,578
In discussing obviousness in In re O'Farrell, 853 F.2d 894, 903-04, 7 USPQ2d
1673, 1681 (Fed. Cir. 1988)(citations omitted):
The admonition that “obvious to try” is not the standard under § 103 has
been directed mainly at two kinds of error. In some cases, 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 gate either no indication of which parameters were critical
or no direction as to which of many possible choices is likely to be
successful. . . . In other, 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.
In order to succeed in producing a protein by expression in a prokaryotic cell, one
must necessarily obtain a nucleic acid that encodes the desired protein. Hirano provides
no guidance in this regard. While JP 115025 does describe the amino acid sequence for
a small segment of the desired protein, the N-terminal sequence is not the same as the N-
terminal sequence of the product recited in the claims. Even if one of skill in the art were to
succeed in obtaining a coding sequence based upon the information given, the examiner
has not explained why it would have been obvious to add an alanine residue at the N-
terminus of the sequence disclosed in the patent.
In contrast, Weissenbach, Zilberstein, and Revel do teach nucleic acids.
Weissenbach teaches sucrose gradient fractionation of mRNA from superinduced
fibroblasts, isolation of about 25 cDNA clones, selection of one clone A341, identification
of 12 of the clones as having overlapping sequence, and identification of an mRNA of
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