Appeal No. 2001-0562 Page 11
Application No. 08/460,478
prior art applied is there a suggestion that would motivate one of ordinary skill in
the art to substitute adenoviral vectors for the herpes virus taught by Geller.
While a person of ordinary skill in the art may possess the requisite
knowledge and ability to modify the protocol taught by the prior art, the
modification is not obvious unless the prior art suggested the desirability of the
modification. In re Gordon, 733 F.2d 900, 902, 211 USPQ 1125, 1127 (Fed. Cir.
1984). On this record, we see no such reason to modify the references as
applied.
With regard to the second criterion set forth in Dow, we are not persuaded
by the examiner’s reliance on Stratford-Perricaudet and Cohen-Haguenauer for
the teachings that adenovirus might be useful for gene therapy, thereby
providing the “motivation” to support the combination relied on by the examiner.
Instead, we agree with appellants (Brief, page 21) that “[w]hen viewed as a
whole, Stratford-Perricauded, at best, provides a general teaching that further
experimentation might at some point establish that adenovirus vectors are useful
in gene therapy applications for treating neurological diseases.” In this regard,
we remind the examiner that “[a] general incentive does not make obvious a
particular result, nor does the existence of techniques by which those efforts can
be carried out.” In re Deuel, 51 F.3d 1552, 1559, 34 USPQ2d 1210, 1216 (Fed.
Cir. 1995). While a “general incentive” may make an approach “obvious to try” it
does not make the invention obvious. “Obvious to try” is not the standard of
obviousness under 35 U.S.C. § 103. In re O’Farrell, 853 F.2d 894, 903, 7
USPQ2d 1673, 1680 (Fed. Cir. 1988).
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