Appeal No. 1999-1676
Application No. 08/452,228
practicing the claimed invention, a suggestion to modify the prior art to practice the
claimed invention, and evidence suggesting that it would be successful.”
Since there are no per se rules of obviousness or nonobviousness, each
case must be decided upon the facts in evidence in that case. See In re Cofer, 354
F.2d 664, 667, 148 USPQ 268, 271 (CCPA 1966)(“[n]ecessarily it is facts
appearing in the record, rather than prior decisions in and of themselves, which
must support the legal conclusion of obviousness under 35 U.S.C. § 103”); and Ex
parte Goldgaber, 41 USPQ2d 1172, 1176 (Bd. Pat. App. & Int. 1995) (“each case
under 35 U.S.C § 103 is decided on its own particular facts”).
Considering the facts on this record, appellants argue (Brief, bridging
paragraph, pages 5-6) that “[t]he studies in Zhang do not indicate that an OB
homolog exists in rhesus monkeys because genomic DNA from monkeys is not
included in the blot.” Appellants further argue (Brief, page 7) that Zhang provides
“no information regarding probe content or specific hybridization conditions that
would enable one to clone the rhesus ob cDNA and identify the corresponding
protein. It is often quite difficult to predict whether a particular probe will work, under
a certain set of hybridization conditions, to clone a particular gene.”
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