Appeal No. 2004-0456
Application No. 08/913,699
Appellants argue that (Brief, page 7-8):
The Office's rationale for combining Benoit, Baer, and McLean is based
upon impermissible selective “picking and choosing” of specific
components from the cited references. ...[T]he office is employing an
impermissible “obvious to try” standard in concluding it would have been
obvious to combine Baer's or McLean's nucleic acid encoding an LCAT
with Benoit's recombinant viral vector, or to use it to stimulate cholesterol
efflux in an individual.
Appellants also submit that, “if the prior art of record provides only a speculative basis
for investigating the effect of administering LCAT 'to determine if such such [sic]
treatments might be useful...', then it does not provide a reasonable expectation of
successfully practicing the claimed invention.” Brief, pages 9-10.
We agree with appellants that the examiner has failed to establish a prima facie
case of obviousness with the cited evidence before us. 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)
“‘[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). “An ‘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).
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