Interference No. 105,188
Short v. Punnonnen
use of recursive sequence recombination and/or other recursive
mutation techniques for creating novel DNA using a recombinant
DNA library would have been obvious to achieve optimum results.
Persons having ordinary skill in the art would have required no
5 more instruction and/or motivation than is provided by the prior
art relied upon to make and use the method of Punnonen’s
Claim 47.
Where, as here, the general conditions of a claimed process
are disclosed in the prior art, it is not inventive to optimize
10 by routine experimentation. In re Aller, 220 F.2d 454, 456,
105 USPQ 233, 235 (CCPA 1955). Here, the evidence shows that
persons having ordinary skill in the art understood that optimum
results could be achieved by recursive homologous recombination
at the pertinent time without undue experimentation. Stemmer
15 acknowledges that it was within the ordinary skill of the artisan
to optimize the modulatory effect on an immune response of a
protein encoded by recombinant DNA by recursive sequence
recombination. Moreover, the obviousness of the method of
Claim 47 of Punnonen’s involved application is kindled by
20 specific intructions in the Short PCT to repeat recombination
procedures to create a desired phenotype (Exh. 2050, p. 33,
l. 35, to p. 35, l. 17). The Short PCT directs persons skilled
in the art to utilize recursive sequence mutations, including
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