Appeal No. 2001-1580 Page 6
Application No. 08/955,090
proteins]. . . . In exceptional cases, an unexpected improvement
over some properties of the natural sequence was observed [listing
two proteins].
Specification, page 6. Appellants argue that in view of the prior art as a whole,
one skilled in the art would appreciate that it is an unpredictable
[sic] that a circular permuted molecule would have comparable
activity of the native ligand. The prior art provides only a very
limited number of examples of circular permuted proteins and the
results have been variable. . . . In many of these studies, circular
permutation disrupted the structure of the protein, and hence the
bioactivity. . . . There is no teaching in ‘599 [Pastan], Hannum or
Lyman about whether circular permuteins of flt3 ligand will fold
properly and maintain biological activity.
Appeal Brief, page 15.
Prima facie obviousness under 35 U.S.C. § 103 requires that the prior art
would have led a person of ordinary skill in the art to make the claimed invention,
with a reasonable expectation of success. See, e.g., In re Vaeck, 947 F.2d 488,
493, 20 USPQ2d 1438, 1443 (Fed. Cir. 1991). By contrast, “[a]n ‘obvious-to-try’
situation exists when a general disclosure may pique the scientist’s curiosity,
such that further investigation might be done as a result of the disclosure, but the
disclosure itself does not contain a sufficient teaching of how to obtain the
desired result, or that the claimed result would be obtained if certain directions
were pursued.” In re Eli Lilly & Co., 902 F.2d 943, 945, 14 USPQ2d 1741, 1743
(Fed. Cir. 1990). “‘[O]bvious to try’ is not the standard under § 103.” In re
O’Farrell, 853 F.2d 894, 903, 7 USPQ2d 1673, 1680 (Fed. Cir. 1988).
In this case, we agree with Appellants that the cited references may have
made it obvious to try making circularly permuted flt3 ligands, but they do not
support a prima facie case under § 103. Pastan discloses the concept of
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