Appeal No. 2005-2267 Page 7
Application No. 09/870,899
However, in the examiner’s opinion, all of these deficiencies in Abayasekara, are
apparently accounted for by the knowledge of a person of ordinary skill in the art.
See e.g., Answer, pages 7-9.
The examiner, however, appears to disregard Abayasekara’s conclusion
(bridging paragraph, pages 282-283),
[o]ur relative lack of knowledge means that it is impossible to
predict at present whether particular dietary manipulations, which
may be desirable from a human health viewpoint will enhance or
reduce fertility. Therefore, it is essential that further research into
this general area is carried out before any changes in feed in terms
of PUFA [(polyunsaturated fatty acids)] composition, are
implemented….
As we understand Abayasekara’s conclusion, in the absence of further research
into the effect of polyunsaturated fatty acids on fertility, there is no reasonable
expectation of success in the use of such fatty acids to either enhance or reduce
fertility. To establish a prima facie case of obviousness, there must a reasonable
expectation of success. In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1442
(Fed. Cir. 1991). In the absence of a reasonable expectation of success one is
left with only an “obvious to try” situation which is not the standard of
obviousness under 35 U.S.C. § 103. In re O’Farrell, 858 F.2d 894, 904, 7
USPQ2d 1673, 1681 (Fed. Cir. 1988). On this record, the examiner’s reliance on
Abayasekara establishes only that it would have been obvious to try to, inter alia,
increase the reproductive performance of a female swine, by administering
polyunsaturated fatty acids. This is, however, not the standard of obviousness.
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007