Appeal 2007-1819
Application 09/886,055
There is no doubt that “[t]he combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 127 S. Ct.
1727, 1739, 82 USPQ2d 1385, 1395 (2007). However, the problem with the
Examiner’s rationale is that there is no fact-based reasoned analysis of the
evidence on this record that would lead a person of ordinary skill in this art
to conclude that a protein that shares some degree of homology with an
olfactory receptor, as well as other proteins, would be expected to be an
olfactory receptor.
Without some suggestion in the art that would have led a person of
ordinary skill in the art to conclude that SEQ ID NO: 55 is an olfactory
receptor; it cannot be said that the use of SEQ ID NO: 55 in Krautwurst’s
method would yield a predictable result. Instead, without the knowledge
that SEQ ID NO: 55 is an olfactory receptor, one would not be able to draw
any conclusion from its inclusion in Krautwurst’s method.
The same is true if one would argue that it would have been “obvious
to try” using Burford’s protein having SEQ ID NO: 27 in Krautwurst’s
method. Absent knowledge in the art that would have led a person of
ordinary skill in the art to reasonably conclude that SEQ ID NO: 27 is an
olfactory receptor, one would not be able to draw any conclusion from its
inclusion in Krautwurst’s method. Stated differently, one would not have
been able to predict whether SEQ ID NO: 27 would provide any informative
result in Krautwurst’s method or that it would be capable of representing
sensory perception as is required by Appellants’ claimed invention. As set
forth in KSR, 127 S. Ct. at 1742, 82 USPQ2d at 1397, emphasis added,
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