Appeal No. 1997-4380
Application No. 08/147,878
215, 219 (CCPA 1980) (citations omitted), our reviewing court has found an
exception to this general rule where Athe parameter optimized was not recognized
to be a result effective variable,@ In re Antonie, 559 F.2d 618, 621, 195 USPQ 6, 8
(CCPA 1977). On this record, absent the benefit of appellants’ specification, the
examiner does not identify, and we do not find, a suggestion in the prior art that the
length of the nucleotide sequence is a result effective variable. Furthermore, even if
there was a suggestion in the art that the length of the nucleotide sequence is a
result effective variable, we do not find a suggestion in the prior art relied upon that
suggests that the specific nucleotide sequences claimed by SEQ ID NO.
To the extent that the references could be combined as the examiner argues,
the combination is inconsistent with the proper standard for obviousness. The mere
fact that the prior art could be so modified would not have made the modification
obvious unless the prior art suggested the desirability of the modification. In re
Laskowski, 871 F.2d 115, 117, 10 USPQ2d 1397, 1398-99 (Fed. Cir. 1989); In re
Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). Here no
reference applied by the examiner taken alone or collectively teaches the SEQ ID
NO limitations of each claim on appeal. The examiner does not identify, and we do
not find, a suggestion in the prior art relied upon that would indicate that the prior art
should be modified to have the exact sequences in the claims.
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