Appeal No. 1999-1732
Application No. 08/308,879
hormone] antagonists such as [G120R] to mammary tumor cells or patients having breast
cancer to regress tumor growth because Kopchick et al. teach that [growth hormone]
antagonists are useful in the treatment of breast cancer. See Answer, pages 5-6.
Appellants argue that the statements in the Kopchick reference are merely an
invitation to experiment, or that it is merely obvious to try the process suggested by the
reference, and thus that the reference does not provide a reasonable expectation of
success of inhibiting the growth of breast cancer cells using a growth hormone antagonist.
We agree.
A determination of obviousness not only requires that the prior art would have
suggested the claimed process to one of ordinary skill in the art, but also that the process
would have a reasonable likelihood of success when viewed in light of the prior art. See In
re Dow Chemical Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed. Cir. 1988). A
rejection based on a reference or a combination of references amounts to an “invitation to
experiment,” and is thus “obvious-to-try,” “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). The Kopchick reference, while suggesting that growth hormone antagonists may be
used in the treatment of cancers whose growth is facilitated by endogenous growth
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