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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