Interference No. 104,733
Page No. 29
to encode that protein. Cf., Regents of the Univ. of Cat v. Eli Lilly & Co., 119 F.3d
1559, 1567, 43 USPQ2d 1398, 1405 (Fed. Cir. 1997)("We had previously held that a
claim to a specific DNA is not made obvious by mere knowledge of a desired protein
sequence and methods for generating the DNA that encodes that protein."); In re
Deuel, 51 F.3d 1552, 1558, 34 USPQ2d 1210, 1215 (1995)("A prior art disclosure of
the amino acid sequence of a protein does not necessarily render particular DNA
molecules encoding the protein obvious because the redundancy of the genetic code
permits one to hypothesize an enormous number of DNA sequences coding for the
protein."); In re Bell, 991 F.2d 781, 787, 26 USPQ2d 1529, 1531 (Fed. Cir. 1993)("It
may be true that, knowing the structure of the protein, one can use the genetic code to
hypothesize possible structures for the corresponding gene and that one thus has the
potential for obtaining that gene... Therefore, given the nearly infinite number of
possibilities suggested by the prior art, and the failure of the cited prior art to suggest
which of those possibilities is the human sequence, the claimed sequences would not
have been obvious.").
Anticipation is the epitome of obviousness. Connell v. Sears, Roebuck & Co.,
722 F.2d 1542, 1548, 220 USPQ 193, 198 (Fed. Cir. 1983) (citing In re Fracalossi, 681
F.2d 792, 215 USPQ 569 (CCPA 1982)). Anticipation is established only if each and
eve[y elemen of a properly construed claim is found, either expressly or inherently
described, in a prior art reference. PPG Indus., Inc. v. Guardian Indus. Corp., 75 F.3d
1558, 1566, 37 USPQ2d 1618, 1624-1625 (Fed. Cir. 1996).
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