Appeal No. 1999-1676
Application No. 08/452,228
In response appellants argue (Brief, bridging paragraph, pages 4-5) with
reference to In re Bell, 991 F.2d 781, 26 USPQ2d 1529 (Fed. Cir. 1993) that “[t]he
fact that methods exist which might allow one to clone a rhesus ob cDNA, however,
is irrelevant as to whether that particular cDNA is obvious. … Similarly, [a]pplicants
do not claim a method of isolating an ob cDNA, but rather claim the ob cDNA itself.”
Appellants appear to argue that Bell, see also In re Deuel, 51 F.3d 1552, 34
USPQ2d 1210 (Fed. Cir. 1995), stands for the proposition that it is per se error to
rely upon so-called methodology in determining the patentability of claims directed
to a product. In this regard, we note that since the decisions in Bell and Deuel, our
appellate reviewing court has made it clear that there are no per se rules of
obviousness or nonobviousness. In re Ochiai, 71 F.3d 1565, 1572, 37 USPQ2d
1127, 1133 (Fed. Cir. 1995)(“reliance on per se rules of obviousness is legally
incorrect”). Accord, In re Brouwer, 77 F.3d 422, 425, 37 USPQ2d 1663, 1666
(Fed. Cir. 1996).
Further, such a per se approach would be in conflict with long standing
precedent as to the relevance of the method of making a product to the
obviousness of the product. Note In re Payne, 606 F.2d 303, 314, 203 USPQ 245,
255 (CCPA 1979), citing In re Hoeksema, 399 F.2d 269, 274, 158 USPQ 596, 601
(CPA 1968)(“[a]n invention is not ‘possessed’ absent some known or obvious way
to make it”). In a similar manner, the court in In re O’Farrell, 853 F.2d 894, 902, 7
USPQ2d 1673, 1680 (Fed. Cir. 1988), in considering the Polisky reference relative
to the rejected claims stated “Polisky contained detailed enabling methodology for
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