Appeal No. 2002-0449 Page 5
Application No. 09/037,409
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, the examiner reasoned that those of skill in the art would
have found it obvious to apply some combination of the general protein
purification techniques disclosed by Harris to the partially purified glycoprotein
disclosed by Mandal, in order to purify the glycoprotein to homogeneity. The
examiner has not adequately explained, however, how the cited references
would have taught “how to obtain the desired result, or that the claimed result
would be obtained if certain directions were pursued.” Cf. Lilly, 902 F.2d at 945,
14 USPQ2d at 1743. In the absence of such guidance, the references might
make the claimed invention obvious to try, but they do not make it unpatentable
under 35 U.S.C. § 103. The rejection is reversed.
Other Issues
1. Enablement
None of the claims on appeal are limited to a protein from a particular
species, or a protein purified by a specific process, or a protein having a specific
amino acid sequence. Thus, for example, claim 1 appears to read on any
homogeneously purified glycoprotein having a molecular weight of 66 kilodaltons
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