Interference 103,579
new or old, obvious or nonobvious, materials are used or
result from the process are only factors to be considered,
rather than conclusive indicators of the obviousness or
nonobviousness of the claimed process. When any applicant
properly presents and argues suitable method claims, they
should be examined in light of all these relevant factors,
free from any presumed controlling effect of Durden.
Durden did not hold that all methods involving old process
steps are obvious; the court in that case . . . refused to
adopt an unvarying rule that the fact nonobvious starting
materials and nonobvious products are involved ipso facto
makes the process nonobvious. Such an invariant rule
always leading to the opposite conclusion is also not
the law.
Even if persons having ordinary skill in the art would have
considered all of Visser’s full length potato cDNA and genomic
DNA sequences coding for GBSS in the antisense direction and
Hofvander’s SEQ ID Nos. 1, 2 and 3 in the antisense direction all
to be GBSS gene fragments, the evidence of record does not
establish that persons having ordinary skill in the art
reasonably would have considered any one of the chemical
structures of any one of Visser’s GBSS gene fragments to be
either the same as, or obvious in view of, any one of the
chemical structures of any one of Hofvander’s GBSS gene
fragments, and vice versa. Even if Visser’s specification does
contemplate using whatever “sufficient part” (VR 149, l. 8) of
antisense PGBSS cDNA or genomic DNA sequence may be functionally
“effective for obtaining tubers containing amylose-free starch”
(VR 149, l. 8-9), i.e., using functionally effective fragments of
the full length cDNA or genomic DNA sequence coding for PGBSS in
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