Interference 103,781
However, to establish that the inventive process Fischhoff
conceived would have been obvious to persons having ordinary
skill in the art in view of the same prior art teaching, the
prior art would have had to have led them to reasonably expect
that the synthetic genes of Claims 41-43 of Fischhoff’s involved
application and Claims 13-14 of Adang’s involved patent would
work. Thus, to make its case for the patentability of
Fischhoff’s Claims 41-43 over the prior art including, inter
alia, Claims 1-12 of Adang’s U.S. Patent 5,380,831, issued
January 10, 1995; Claims 3, 5, and 39-40 of Fischhoff’s U.S.
Application 08/434,105, filed May 3, 1995; Claims 1-4, 7, and
15-22 of Barton’s U.S. Application 07/827,906, filed January 30,
1992; Shaw; and Wickens; the prior art must have presented more
than an “obvious to try” situation where, as O’Farrell instructs
at 852 F.2d at 903, 7 USPQ2d at 1681 (emphasis added):
[W]hat would have been “obvious to try” would have been
to . . . try each of numerous possible choices until
one possibly arrived at a successful result, where the
prior art gave no indication of which parameters were
critical or no direction as to which of many possible
choices is likely to be successful.
To establish an invention’s obviousness in view of prior art
teaching, the collective prior art must have provided persons
having ordinary skill in the art with more than “a general
approach that seemed to be a promising field of experimentation,
where the prior art gave only general guidance as to the
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