Ex Parte Stryer et al - Page 11

                Appeal 2007-1819                                                                             
                Application 09/886,055                                                                       
                      [w]hen there is a design need or market pressure to solve a                            
                      problem and there are a finite number of identified, predictable                       
                      solutions, a person of ordinary skill has good reason to pursue                        
                      the known options within his or her technical grasp.  If this                          
                      leads to the anticipated success, it is likely the product not of                      
                      innovation but of ordinary skill and common sense.  In that                            
                      instance the fact that a combination was obvious to try might                          
                      show that is was obvious under § 103.                                                  
                While the evidence relied upon may lead one to do further research to                        
                determine whether SEQ ID NO: 27 is, in fact, an olfactory receptor – the                     
                evidence of record does not provide for the predictable practice of                          
                Appellants’ claimed invention using SEQ ID NO: 27.  As set forth in In re                    
                O’Farrell, 853 F.2d 894, 903, 7 USPQ2d 1673, 1681 (Fed. Cir. 1988),                          
                citations omitted:                                                                           
                      [t]he admonition that “obvious to try” is not the standard under                       
                      § 103 has been directed mainly at two kinds of error.  In some                         
                      cases, what would have been “obvious to try” would have been                           
                      to vary all parameters or try each of numerous possible choices                        
                      until one possibly arrived at a successful result, where the prior                     
                      art gave either no indication of which parameters were critical                        
                      or no direction as to which of many possible choices is likely to                      
                      be successful. . . .  In others, what was “obvious to try” was to                      
                      explore a new technology or general approach that seemed to be                         
                      a promising field of experimentation, where the prior art gave                         
                      only general guidance as to the particular form of the claimed                         
                      invention or how to achieve it.                                                        
                On this record, the evidence provides general guidance that would lead, at                   
                best, to a promising field of experimentation.                                               
                      On reflection, we find that there is insufficient evidence on this record              
                to support a conclusion that Burford teaches or reasonably suggest that                      
                Buoford’s protein having SEQ ID NO: 27 is an olfactory receptor protein.                     


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