Appeal No. 1997-2509
Application No. 08/230,982
Brief, pages 4-7. To further support this argument, appellant presents the Declaration of
Dr. Warne stating that interleukin nomenclature is based primarily on function and is not
based on structural similarities. Dr. Warne further states that it is not possible to make
generalizations about how these molecules will behave in solution. Brief, page 5.
Appellant controverts the examiner’s analysis of Wang, indicating that Wang
suggests that glycine alone is insufficient to stabilize many proteins. Appellant argues the
examiner has not established that any of the cited proteins show structural similarity to IL-
11 and thus the examiner has not established a prima facie case of obviousness. Brief,
page 10.
Appellant submits that even if the prior art does provide a generalized teaching to
try glycine (appellant submits it does not), that this is nothing more than an invitation to
experiment and does not render obvious appellants’ invention. Brief, page 16.
In discussing obviousness in In re O'Farrell, 853 F.2d 894, 903-04, 7 USPQ2d
1673, 1681 (Fed. Cir. 1988)(citations omitted) the Federal Circuit stated:
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 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
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