Appeal No. 2001-0733 Page 9
Application No. 09/095,429
Moreover, the Youle declaration also establishes the unpredictability of
arriving at the claimed invention by stating that “the synthesis of an active,
recombinant form of Onc occurred only after following traditional approaches that
failed repeatedly. Finally, after many man years, we unexpectedly were able to
produce a cytotoxic recombinant protein by cleaving the N-terminal methionine.”
Youle declaration, ¶ 2; see also id. at ¶s 6 and 8. The Youle declaration further
demonstrates the unpredictability of the problem by declaring that the rhRNase1-
11-Onc10-104 chimera has about 100 times greater catalytic activity than rOnc, yet
is much less cytotoxic than Onc. See Youle declaration, ¶ 5.
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
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