Interference 103,781
particular form of the claimed invention or how to achieve it.”
In re O’Farrell, 853 F.2d at 903, 7 USPQ2d at 1681. Unlike the
requirement for conception, to establish obviousness in view of
prior art teachings, the prior art must provide enough guidance
and direction to have led persons having ordinary skill in the
art to reasonably expect that a native Bt gene sequence encoding
insecticidal protein, when modified in any manner indicated by
the parties’ broadest claims, Shaw, Wickens, and the preexisting
knowledge in the art, would be more highly expressed in plants
then the native Bt gene sequence itself.
Here, the preponderance of the evidence of record indicates
that, even assuming prior knowledge of the concept of any one of
Claims 1-4, 7, and 15-22 of Barton’s U.S. Application 07/827,906,
filed January 30, 1992; Claims 3, 5, and 39-40 of Fischhoff’s
U.S. Application 08/434,105, filed May 3, 1995; or Claims 1-12 of
Adang’s U.S. Patent 5,380,831, issued January 10, 1995, claims
designated as corresponding to Count 2, persons having ordinary
skill in the art reasonably could not have predicted that a
native Bt gene sequence modified in accordance with any of the
above claims designated as corresponding to Count 2 without
dispute, would be more highly expressed in a plant than the
native Bt gene sequence from which it was derived, i.e., was
likely to be successful. For example, David Fischhoff, himself,
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