Appeal No. 1999-1221
Application No. 08/342-242
references by monitoring myb, myc, jun, or rel rather than fos. The ”evidence of
a suggestion, teaching, or motivation to combine . . . must be clear and
particular.” In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed.
Cir. 1999). Sassone-Corsi provides only vague and tentative statements linking
fos with the nuclear oncoproteins recited in the claims. These statements fall
short of the “clear and particular” evidence of motivation to combine that is
required to support a prima facie case of obviousness.
While Sassone-Corsi’s disclosure may have motivated a person skilled in
the art to conduct general research aimed at elucidating the role of nuclear
oncoproteins such as Myc, Jun, and Rel in the process of signal transduction,
such general motivation at most makes an invention obvious to try. See In re
O’Farrell, 853 F.2d 894, 903-04, 7 USPQ2d 1673, 1681 (Fed. Cir. 1988) (“The
admonition that ‘obvious to try’ is not the standard under § 103 has been directed
mainly at two kinds of error. . . . In others, 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.”). Of course,
“obvious to try” is not obviousness under § 103.
Nor does the disclosure of Pang provide the required motivation with
respect to claims 1, 3, 13-15, and 17. Pang’s disclosure relates to PDGF
receptors and identification of antagonists for PDGF receptors. Pang provides
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