Appeal 2007-1621
Application 10/721,839
1846. Like the situation in Merck, the artisan of ordinary skill need only
make two choices from a list explicitly set forth in the Lehrer reference. In
our view, the Examiner properly concluded that one of ordinary skill would
have considered claim 1 obvious over Lehrer.
Appellants argue that inhibition of HIV is unpredictable, and that
“[w]here unpredictability undercuts any likelihood of success, as is the case
here, there is no prima facie [case of obviousness]” (Br. 10). Appellants
urge that the unpredictability in the field is demonstrated by Lehrer’s
disclosure that most of the mono-tyrosine substituted retrocyclin variants
were either inactive or only modestly active against HIV-1 strain IIIB, and
that variants RC-106, RC-107, and RC-108 “were not functional against the
JR-CSF strain, either” (Reply Br. 7).
We do not find these arguments persuasive. While Lehrer discloses
that certain tyrosine-substituted peptides were less effective in inhibiting
HIV-1 infection, none of Lehrer’s 46 variations on the retrocyclin consensus
sequence has a tyrosine (Y) substitution (see id. at 7-8). Thus, no member of
Lehrer’s genus has the amino acid substitution urged by Appellants to
undermine the predictability of Lehrer’s disclosure.
Moreover, it is well settled that “[o]bviousness does not require
absolute predictability of success. . . . [A]ll that is required is a reasonable
expectation of success.” In re O’Farrell, 853 F.2d 894, 903-04, 7 USPQ2d
1673, 1681 (Fed. Cir. 1988). In the instant case, claim 1 only requires the
peptide to “reduc[e] the infectivity” of any enveloped virus. Claim 1
therefore encompasses even very small levels of infectivity reduction.
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