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Substantial Evidence Supports Finding Claims Prima Facie Obvious

February 20, 2003

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Last Month at the Federal Circuit - March 2003

Judges: Bryson (author), Plager, and Prost

In In re Berg, No. 02-1120 (Fed. Cir. Feb. 20, 2003), the Federal Circuit affirmed two related decisions by the Board that found the claims of two applications to be prima facie obvious and, thus, unpatentable.

The applications, the first of which was filed in 1994 by Richard A. Berg et al., claimed a particular recombinant procollagen polypeptide chain, i.e., a protein, and the nucleic acid that encodes the protein. The claimed protein can be used as a precursor for synthesizing collagen, a natural protein having a wide range of applications. In particular, the claimed protein enables proper folding of the synthesized collagen. The Examiner rejected both applications as prima facie obvious over various references, and the Board upheld the rejections.

On appeal, the Appellants did not challenge the findings that procollagens and genes that encode them were well-known in the art. Rather, their arguments focused solely on the teachings of one reference, Carter, which the Examiner held provided the motivation to combine the other references. The Federal Circuit noted with approval the great detail in which the Examiner explained that the claimed protein, which was a simple fusion of two known proteins, would have been obvious to a person of ordinary skill in the art.

The Court, furthermore, rejected the Appellants’ attempts to read Carter more narrowly and highlighted their failure to rebut the Examiner’s conclusions regarding the more general teachings of Carter. The Federal Circuit also rejected an argument that the references taught away from the claims, because the Appellants did not explain how the prior art taught that the claims would be unlikely to produce the desired result, i.e., a properly folded procollagen molecule.